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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lloyd's v. Lloyds America Indemnity Corporation

Case No. D2006-1327

 

1. The Parties

The Complainant is Lloyd's, United Kingdom of Great Britain and Northern Ireland, represented by an internal representative.

The Respondent is Lloyds America Indemnity Corporation, of New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lloydsamerica.net> (“Domain Name”) is registered with All West Communications Inc. dba AWRegistry.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2006. On October 18, 2006, the Center transmitted by email to All West Communications Inc. dba AWRegistry a request for registrar verification in connection with the domain name at issue. On October 19, 2006, All West Communications Inc. dba AWRegistry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complainant satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2006.

The Center appointed Richard Tan as the Sole Panelist in this matter on December 7, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is Lloyd’s, also known as Lloyd’s of London, a Society and Corporation incorporated by the Lloyd’s Act 1871, an Act of Parliament of the United Kingdom. Lloyd’s has operated an insurance market for over 300 years under the LLOYD’S trademark and has a global and well-established presence. Lloyd’s has a subsidiary, Lloyd’s America Inc, established in 1996/7 and located in New York.

The Domain Name registered by the Respondent resolves to a website which appears to offer insurance and insurance-related services.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The Domain Name is confusingly similar to the Complainant’s well-known trademarks LLOYD’s and LLOYD’S OF LONDON and the Complainant’s registered domain names <lloyds.com> and <lloydsamerica.com>, the latter of which is the domain name of the website of one of the Complainant’s subsidiaries.

The Complainant contends that the trademarks LLOYD’s and LLOYD’S OF LONDON have been registered around the world including Asia, the European Union and in the United States of America, and include registrations at the United States Patent and Trademark Office on February 1, 2005 (No. 2921863), May 15, 1979 (No. 1118425) and April 13, 2004 (No. 2832189) in Classes 9, 16, 35, 36. The Complainant also contends that the LLOYD’S trademark has been used continuously by the Complainant since 1688.

The Complainant further contends that Lloyds America Inc. is a wholly owned subsidiary of Lloyds America Holdings Inc., which is itself a subsidiary of the Complainant. Its website is at “www.lloydsamerica.com” and forms part of the Complainant’s “www.lloyds.com” website.

The Complainant claims that by virtue of its long and well-established presence in the industry for over 300 years, and its century-long presence in the United States, there is substantial goodwill and reputation in the names LLOYD’S, LLOYD’S OF LONDON and LLOYD’S AMERICA in the field of insurance and insurance-related services.

The Complainant contends that the Domain Name is also confusingly similar to the registered domain names <lloyds.com> and <lloydsamerica.com>.

The Complainant complains that the Respondent’s website offers insurance services to the public in connection with the LLOYD’S AMERICA mark in countries around the world in which the Complainant is known to have a long standing presence and insurance underwriting services and in areas such as shipping, commercial property and aviation, which are areas traditionally associated with the Complainant. Accordingly, the Complainant asserts that the Respondent’s offer of insurance related services under the LLOYD’S AMERICA mark is likely to confuse the public by causing it to believe that it is in some manner connected with, sponsored by, or approved by the Complainant and that such confusion is inevitable given that the Respondent provides the same services that the Complainant provides in connection with the famous LLOYD’S mark. Further, the Complainant contends that the Respondent’s registration and use of a LLOYD’S formative domain name and mark indicates an intention to deceive the public into believing that it is the Complainant’s subsidiary, Lloyd’s America Inc. and to misdirect consumers to the Respondent’s website rather than the Complainant’s.

The Complainant admits that there is a disclaimer “Lloyds America has no relations with Lloyds of London” at the Respondent’s website but contends that the disclaimer, which is in small type and found at the bottom of the Respondent’s webpage, will not reduce the confusion or deception of visitors as it is unlikely that any visitor to the website would ever read it, let alone recall its terms when dealing with the Respondent.

(b) The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant contends that there is no relationship between the Respondent and the Complainant or its subsidiary Lloyd’s America Inc. and that the Complainant has not licensed or otherwise permitted the Respondent to use its name or its trademarks. The Complainant contends that there is no suggestion or evidence to indicate that the Respondent has acquired any trademark rights or other legitimate interests in the names Lloyd’s or Lloyd’s America.

The Complainant asserts that the Respondent has only “the most minimal contact” with America. It claims that a representative of the Respondent admitted to the Complainant’s attorney during a telephone conversation that the Respondent’s New York address was not a genuine office but a mailing address or a “virtual” office. The Complainant also asserts that the Respondent’s office addresses in California and Singapore are also “virtual” offices and the Respondent has actually no employees in the United States of America. It further alleges that most of the Respondent’s business is in Iraq.

(c) The Respondent’s registration and use of the Domain Name is in bad faith.

The Complainant asserts that there is no good reason or explanation for the use of the Domain Name by the Respondent in its present form. The Complainant also contends that the Respondent has minimal contact with the United States of America and is in no way associated, sponsored or affiliated with Lloyd’s or Lloyd’s America. The Complainant contends that the Respondent’s minimal contact with the United States of America does not justify its use of “America” in the Domain Name. Further, despite assertions by the Respondent that a person named Lloyd was associated with the Respondent during the above mentioned telephone conversation between the Respondent’s representative and the Complainant’s attorney, the Complainant contends that there was no evidence of such an association with such a person, and in any event, such mere association does not justify using the name in circumstances where doing so is likely to cause confusion and/or deception.

B. Respondent

The Respondent has not filed a Response.

 

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the Domain Name:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate”.

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings, see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favor of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled, under the Policy, to a transfer of the Domain Name, see World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.

The Complainant has contended that it is the owner of numerous trademark registrations for LLOYD’S and LLOYD’S OF LONDON worldwide and that it has the exclusive right to use the domain names <lloyds.com> and <lloydsamerica.com>, which direct users to the Complainant’s website and that of its subsidiaries.

Having regard to the evidence adduced by the Complainant, and considering that the evidence is unchallenged as no Response has been filed by the Respondent, this Panel accepts that the Complainant has rights, within the meaning of paragraph 4(a)(i) of the Policy, in the trademarks “LLOYD’S” and “LLOYD’S OF LONDON” and is also the owner of a substantial goodwill and reputation in these marks and in the name LLOYD’S AMERICA.

Turning to the issue of confusing similarity under paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name, <lloydsamerica.net>, is confusingly similar to the Complainant’s LLOYD’S and LLOYD’S OF LONDON’S trademarks and also virtually identical to the mark or name LLOYD’S AMERICA which is the name of the Complainant’s subsidiary, Lloyd’s America Inc. The Domain Name <lloydsamerica.net> is also phonetically similar to the Complainant’s trademarks particularly through its adoption of the famous name LLOYD’s and is apt to lead to confusion by leading the public to think that the Domain Name is in some way associated with the Complainant’s business in the United States of America.

For the purposes of the present proceedings, and in the absence of a Response, the Panel finds that the Domain Name is confusingly similar to a trademark or trademarks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the Domain Name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

It has also been recognized by many panels that it is difficult for the Complainant to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy, since it raises matters within the knowledge of the Respondent. Accordingly, many panels have held that it is sufficient that the Complainant show prima facie evidence in order to shift the burden of proof on the Respondent (see, for example, Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).

In the present case, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant also asserts that the Complainant has not licensed or otherwise permitted the Respondent to use its name or its trademarks and that there is no suggestion or evidence to indicate that the Respondent has acquired any trademark rights or other legitimate interests in the names Lloyd’s or Lloyd’s America. Further, the Complainant asserts that the Respondent’s minimal contact with the United States of America and its lack of association with Lloyd’s America Inc. does not entitle it to register and use the Domain Name.

Even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Domain Name, namely:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers.

If any of the above circumstances are established, the Respondent may be said to have rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

The evidence filed by the Complainant indicates that the site at the disputed Domain Name offers insurance and insurance-related services. The Respondent has filed no evidence in relation to these services. There is no evidence that the Respondent has acquired or owns any trademarks corresponding to the Domain Name.

While the Respondent’s corporate name appears to be “Lloyds America Indemnity Corporation”, it is unclear from the evidence submitted when the Respondent was incorporated or formed. However it would appear from the relevant Whois data that the Domain Name was first created and registered by the Respondent on April 4, 2005. Although the Respondent appears to have an office in New York, according to the evidence submitted by the Complainant consisting of a note of a telephone conversation between the representative of the Respondent and the Complainant’s attorney, the Respondent appears to have been incorporated in the British Virgin Islands and in so far as insurance services are provided, these appear to be mainly provided to companies in Iraq, Sudan and Libya.

In relation to the question of whether a respondent's use of a domain name in connection with an offering of goods or services is bona fide, previous panels have considered both the bona fides of the offer and the bona fides of the use (see for example First American Funds Inc. v. Ult.Search, Inc., WIPO Case No. D2000-1840). In the present case, it is unclear from the evidence provided whether the offer of insurance and insurance-related services is bona fide. The Panel notes in this respect that a brief assessment of layout and general information available on the site at the disputed Domain Name appears to be consistent with an offering of insurance and insurance-related services, although on closer examination certain forms and documents that one would ordinarily expect to be present do not appear to be available.

However, assuming (without deciding) that the offer itself is bona fide, the Panel nevertheless considers that on balance the evidence does not support a determination of bona fide use in the circumstances. Rather, given the prominence and fame of Complainant's marks, as discussed below, the Panel considers it more probable than not that the Respondent was motivated by a desire to benefit from the widespread reputation of the Complainant's marks. That being the case, Respondent can not in the circumstances be using the domain name in connection with a bona fide offering of goods or services (see for example Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, WIPO Case No. D2001-1216). As stated by the panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."

The question whether the Respondent has been “commonly known” by the Domain Name, within the meaning of paragraph 4(c)(ii) of the Policy, is a question of fact. Although the corporate name of the Respondent, “Lloyds America Indemnity Corporation”, includes the words “Lloyds America”, which forms the essential part of the Domain Name, the names are not wholly identical although very similar. It may well be the case that the Respondent is only “commonly known” by its full name and not by the abbreviated version contained in the Domain Name. The extent to which the Respondent is or has been commonly known by the Domain Name would be a matter within the Respondent’s knowledge and such information, if available, could have been easily provided by the Respondent. Evidence as to the business it was carrying on, the manner in which it was carrying on its business, the length of time it was carrying on the business, its trade dress, circulars, advertising material and the like would have been helpful to show whether the Respondent was indeed commonly known by the Domain Name. Unfortunately, the Respondent has chosen not to file a Response.

As noted above, it is sufficient for the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests, and if such a case is made out, the burden will then shift to the Respondent to prove the contrary. This Panel finds that a prima facie case has been made out, and that this has not been answered by the Respondent.

On the totality of the evidence and in the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Complainant asserts that the registration of the Domain Name and its subsequent use by the Respondent is or was a deliberate attempt by the Respondent to attract, for commercial gain, internet users to another online location by creating a likelihood of confusion with the Complainant’s trademarks such that the public might be misled into believing that the site to which the Domain Name resolved was or is sponsored, endorsed, authorised or associated with the Complainant.

This Panel is satisfied on the evidence presented that the Respondent, in deliberately registering and using to offer insurance and insurance-related services a domain name which was highly similar to the Complainant’s trademarks, clearly had knowledge of the Complainant and its services at the time of registration.

While it is true that the Respondent’s website contained a disclaimer that the Respondent had no relations with the Complainant, panels have found that the existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer on the other hand can also show that the respondent had prior knowledge of a complainant’s trademark. (See Estйe Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.)

The Respondent’s disclaimer, which in the present case was placed at the bottom of the website in small font, confirms that the Respondent was fully aware of the Claimant’s widely-known trademarks and reputation. The smallness of the print and its positioning however do not suggest to this Panel a genuine attempt at preventing the average consumer from being misled into thinking that its services were associated with the Complainant. In the circumstances, the Panel does not find the disclaimer to be effective for the purpose of providing a good faith defense. (See for example Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224, and Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316.

The registration and use of the Domain Name, so similar as it was to the Complainant’s famous trademark and name, leads to the inference that the Respondent registered and used the Domain Name to intentionally attract, for commercial gain, internet users to its site by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, and endorsement of Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy.

Accordingly, in the absence of the Respondent’s response to the Complainant’s assertions, the Panel finds that the Domain Name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lloydsamerica.net> be transferred to the Complainant.


Richard Tan
Sole Panelist

Dated: December 21, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1327.html

 

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