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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Insurance Australia Group Limited v. Cameron Jackson

Case No. D2008-0872

 

1. The Parties

The Complainant is Insurance Australia Group Limited, Sydney, New South Wales Australia, represented by Mallesons Stephen Jaques, Australia.

The Respondent is Cameron Jackson, Rosbery, New South Wales, Australia..

 

2. The Domain Name and Registrar

The disputed domain name <nrma.mobi> is registered with Answerable.com (I) Pvt Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2008. On June 6, 2008, the Center transmitted by email to Answerable.com (I) Pvt Ltd a request for registrar verification in connection with the domain name at issue. On June 7, 2008, Answerable.com (I) Pvt Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint 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 June 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 3, 2008. On July 7, 2008, in response to a request by the Complainant, the Center suspended the proceeding until July 14, 2008. On July 11, 2008, the Complainant requested that the proceeding be re-instituted and on July 16, 2008 the Center re-instituted the proceeding as of that date.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on August 1, 2008. 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 a well-known Australian insurance company that offers insurance products under several brands including NRMA Insurance and the Complainant and its predecessors have been doing so since 1925.

The Complainant is the registered proprietor of 13 Australian trademarks incorporating the word “NRMA”, including the following: trademark number 332018, registered on April 26, 1979 with IP Australia for NRMA (“the NRMA mark”). The Complainant also holds domain name registrations for <nrma.com> and <nrma.com.au>, which it uses for websites that promote its business and enable it to conduct online transactions.

The Respondent registered the domain name <nrma.mobi> on September 27, 2006; it does not resolve to a website.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name <nrma.mobi> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name, and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the NRMA mark to which reference has already been made. It then says that it is self-evident that the domain name <nrma.mobi> is identical or confusingly similar to the NRMA mark, as the spelling of the word in the domain name is the same as the spelling of the word in the trademark.

The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known NRMA mark by registering the disputed domain name, a domain name that is identical to the trademark. Nor, it is argued, can the Respondent bring himself within any of the provisions of paragraph 4(c) of the Policy.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent must have been aware of the existence of the NRMA mark which is very prominent in Australia and could only have chosen the domain name in direct contemplation of the mark and to prevent the Complainant reflecting it in a corresponding domain name. It also contends that this conclusion is strengthened by the fact that the Respondent is a serial cybersquatter and has been an unsuccessful respondent in six UDRP proceedings.

The Complainant contends that these factors show that the Respondent both registered and has used the domain name in bad faith.

B. Respondent

The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) [The] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) [The respondent] has no rights or legitimate interests in respect of the domain name; and

(iii) [The domain name] has been registered and is being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to the NRMA mark. The spelling of the domain name is the same as that of the mark and it would also be pronounced the same way as the trademark.

The domain name also consists of the gTLD suffix “.mobi”. In that regard, it has been held many times that suffixes of this sort may not be used to negate a finding of identicality or confusing similarity that is otherwise present on the evidence, as it is in the current case.

The Complainant has therefore made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a) (ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [respondent] of the dispute, your 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the Respondent proves any of these elements or indeed anything else that shows he has a right or legitimate interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when, as in the present case, the registrant is in default and does not file a Response. The Respondent was given notice that he had until July 2, 2008, to send in his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the Overview”) that a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.

That finding is based on the facts that the Respondent, domiciled in Australia, chose for his domain name a name identical to the Complainant’s famous Australian trademark and that the domain name was registered more than 80 years after the Complainant started to sell insurance in Australia under the name and mark NRMA and 29 years after it had registered the NRMA trademark.

The Respondent has not sought to rebut this prima facie case by way of a Response or other submission and hence cannot be said to have rebutted the prima facie case against him.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name and the Complainant has made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(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 the respondent’s 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 [the respondent] 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, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [the respondent’s] website or location or of a product or service on [the] website or location.

The Complainant essentially relies on paragraph 4(b)(ii) of the Policy and submits that the facts come within that provision because the Respondent must be presumed to have intended to register and use the disputed domain name in order to prevent the Complainant from reflecting its NRMA mark in a corresponding domain name. In this regard the Complainant rightly acknowledges that in NBTY, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0835, the panel found that to establish bad faith pursuant to paragraph 4(b)(ii) of the policy, it was necessary that the domain name at issue be identical or confusingly similar to the Complainant’s mark and also that there be a pattern of such conduct in the Respondent’s behavior.

The Panel has already held that the domain name in the present case is identical to the trademark. Moreover, a pattern of such conduct is amply demonstrated by the fact that the Respondent has been the unsuccessful respondent in a series of UDRP proceedings. The evidence submitted by the Complainant shows that the present Respondent was the unsuccessful respondent in Chocoladefabriken Lindt & Sprungli AG v. Cameron Jackson, WIPO Case No. D2007-1290; Alstom v. Cameron Jackson, WIPO Case No. D2007-1022; International Organization for Standardization ISO v. Cameron Jackson, WIPO Case No. D2007-0700; Pfizer Inc. v. Cameron Jackson, WIPO Case No. D2005-0909; June Bug Enterprises, Inc. v. Cameron Jackson, NAF Claim No. 566966 and Diners Club International Ltd. v. Cameron Jackson, NAF Claim No. 502782. Those decisions reveal that the Respondent registered domain names corresponding to prominent trademarks marks, the rights to which were held not by him, but by the successful complainants in those proceedings.

Moreover, in International Organization for Standardization ISO v. Cameron Jackson, (supra) and Pfizer Inc. v. Cameron Jackson, supra, the panels found that Respondent had engaged in a pattern of bad faith conduct within paragraph 4(b)(ii) of the Policy.

Accordingly, the Panel finds that the Respondent registered the domain name in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.

The Panel also finds that it should draw the inference that the Respondent registered and is using the domain name in bad faith because, as the Complainant submits, the Respondent has not made any use, or demonstrable preparations to use, the domain name for a bona fide offering of goods or services, is not commonly known by the domain name, has no permission from the Complainant to use its NRMA trade mark and is not making a legitimate noncommercial or fair use of the name.

Finally, the Complainant submits and the Panel accepts that the non-use of the domain name, which on the evidence is the situation in the present case, amounts to passive holding. As was noted in Telstra supra, such a passive holding, together with other factors indicating that the domain name was registered in bad faith, may be relied on to show that the domain name is also being used in bad faith.

In the present case, those additional facts are that the Respondent registered the domain name, which the evidence shows is identical to one of the most famous commercial brands in Australia and did so more than 80 years after the Complainant started to sell insurance in Australia under the name NRMA and 29 years after it had registered the NRMA trademark. Moreover, the evidence also shows that the respondent is an established cybersquatter, with a number of UDRP decisions against him, including specific findings that he engaged in a pattern of bad faith conduct.

These facts establish the inference, as the Complainant submits, “… that the Respondent registered the domain name with the Complainant in mind and with the hope of capitalizing on the reputation of the Complainant in some way.”

Accordingly, the case comes within the principle in Telstra supra and justifies the conclusion that the Respondent registered and has used the domain name in bad faith.

The Complainant has therefore made out the third of the three elements that it must establish.

 

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 <nrma.mobi> be transferred to the Complainant.


The Honourable Neil Anthony Brown QC
Sole Panelist

Date: August 13, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0872.html

 

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