Direct Response Corporation v. River Cruise Investments c/o William Vaughan
Case No. D2008-1758
1. The Parties
The Complainant is Direct Response Corporation, Meriden, Connecticut, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is River Cruise Investments c/o William Vaughan, Springfield, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <warnerinsurancecompany.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2008. On November 14, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On November 20, 2008, Fabulous.com 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” or “UDRP”), 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 November 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2008.
The Center appointed Joan Clark as the sole panelist in this matter on January 7, 2009. 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 the parent of Warner Insurance Company and is the owner of United States Trademark Registration No. 1,597,808 for the design mark W WARNER INSURANCE COMPANY, registered May 22, 1990 by Fireman's Fund Insurance Company with a first use date of February 27, 1989 and assigned to the Complainant nunc pro tunc effective as of October 5, 2001, the date of the Complainant's acquisition of Warner Insurance Company. The design of the trademark consists of a stylised “w” and the words “warner insurance company”, in which exclusive use of the words “insurance company” is disclaimed apart from the mark as a whole. The Complainant also claims rights in the unregistered mark and name WARNER INSURANCE COMPANY.
The Respondent is the registrant of the disputed domain name <warnerinsurancecompany.com> that was created on November 17, 2005 and is slated to expire on November 17, 2009.
5. Parties' Contentions
A. Complainant
The Complainant declares it is the parent of Warner Insurance Company, through which it provides automobile and umbrella (liability) insurance, including under its trademark WARNER INSURANCE COMPANY, which the Complainant acquired in October 2001. In the United States of America (“U.S.”), Warner Insurance Company is licensed in 39 states and the District of Columbia.
The Complainant further declares that as of June 30, 2008, Warner Insurance Company provided insurance policies under the name and mark WARNER INSURANCE COMPANY to 23,580 policy holders in ten states, generating a total of nearly $32,000,000 in annualized premiums per year.
The Complainant further states it is the owner of United States Trademark Registration No. 1,597,808 for the design mark consisting of a stylised “w” and the words “warner insurance company”, having a first use date of February 27, 1989 and assigned to the Complainant nunc pro tunc effective as of October 5, 2001, the date of the Complainant's acquisition of Warner Insurance Company. In this registration the Complainant's right to the exclusive use of the words “insurance company” apart from the mark as a whole is disclaimed.
The Complainant avers that it has advertised and marketed its insurance services under the WARNER INSURANCE COMPANY mark through its web site at “www.response.com” and direct-to-consumer mailings.
(a) Allegation that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant avers that the disputed domain name, <warnerinsurancecompany.com>, contains the entire WARNER INSURANCE COMPANY mark of the Complainant. Further, the Complainant asserts that, in light of its use of the WARNER INSURANCE COMPANY mark and its federally registered and incontestable mark W WARNER INSURANCE COMPANY (and design), the Respondent's registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's web site associated with its domain name by the Complainant.
The Complainant relates that, on March 7, 2008, through its counsel, the Complainant wrote to the Respondent's address indicated in the WHOIS record for the disputed domain name, advising the Respondent that the registration and use of the disputed domain name infringe the Complainant's trademark rights in the WARNER INSURANCE COMPANY mark, and requesting that the Respondent transfer the disputed domain name to the Complainant. The Complainant's counsel did not receive a reply to this communication or to a follow-up letter sent on March 27, 2008.
The Complainant notes that the addition of descriptive or non-distinctive matter, such as the gTLD designation “.com”, does not prevent the likelihood of confusion between a trademark and a domain name.
The Complainant concludes that the disputed domain name is identical or confusingly similar to the Complainant's WARNER INSURANCE COMPANY mark.
(b) Allegation that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been commonly known by the disputed domain name
The Complainant asserts that it has not authorized the Respondent to use its trademark WARNER INSURANCE COMPANY or to incorporate the trademark into any domain name, that it has never granted the Respondent a license to use the WARNER INSURANCE COMPANY mark, that the Respondent's use of the disputed domain name indicates that the name is being used because of the goodwill created by the Complainant in the WARNER INSURANCE COMPANY mark, and further, that the Respondent has not been commonly known by the disputed domain name.
Further, the Complainant asserts that the Respondent's use of the disputed domain name is purely disreputable, and that the Respondent's web site located at “www.warnerinsurancecompany.com” directs purchasers to multiple sites affiliated with competitor insurance companies and/or through which they may request insurance quotes from the Complainant's competitors.
In addition, the Complainant notes that the Respondent has not made legitimate non-commercial use of the domain name, evidenced by the fact that the Respondent is generating revenue from a click through site by using the Complainant's reputation and reputation and goodwill to attract Internet traffic.
The Complainant continues that the actions undertaken by the Respondent would lead a consumer to believe that the Respondent is the source of Warner Insurance Company services and related information, or that the Respondent's use of Warner Insurance Company in the subject domain name and web site is affiliated with or sponsored by the Complainant.
Alternatively, the Complainant suggests that such uses by the Respondent may lead consumers to believe that the web site located at “www.warnerinsurancecompany.com” is a web site owned and operated by the Complainant.
The Complainant asserts that, by its use and registration of the disputed domain name, which contains the Complainant's WARNER INSURANCE COMPANY mark in its entirety, the Respondent seeks to capitalize on the reputation associated with the Complainant's WARNER INSURANCE COMPANY mark.
The Complainant continues that the Respondent's appropriation and use of the Complainant's trademark WARNER INSURANCE COMPANY to provide links to competitors' web sites are clear attempts to create and benefit from consumers' confusion regarding the association between the Respondent's activities and the Complainant's bona fide business.
The Complainant avers that the Respondent is not using its domain name in connection with a bona fide offering of goods or services, but is relying on the consumers' recognition of the Complainant's name and mark WARNER INSURANCE COMPANY to divert Internet users seeking insurance services under the WARNER INSURANCE COMPANY mark to an unrelated web site which uses the Complainant's said trademark without license or authorization of any kind.
The Complainant further states that the Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain, but instead, is trading on the Complainant's goodwill and is using the disputed domain name to offer and promote unrelated and competing insurance services without authorization from the Complainant.
(c) Allegation that the disputed domain name was registered and is being used in bad faith
The Complainant avers that the Respondent's true purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant's WARNER INSURANCE COMPANY mark by diverting Internet users seeking insurance services under that mark to the Respondent's own web site through which consumers may access competitors' web sites and other sites through which quotes for competitors' insurance services are available.
The Complainant confirms that it has promoted its WARNER INSURANCE COMPANY mark through advertising and marketing, that there exists no relationship between the Respondent and the Complainant, that the Complainant has not given the Respondent permission to use its WARNER INSURANCE COMPANY mark in a domain name, or in any manner, on the Respondent's web site.
The Complainant continues that the only reasonable conclusion is that the Respondent was aware of the WARNER INSURANCE COMPANY mark, and that by operating its web site at “www.warnerinsurancecompany.com” the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site or the services offered or promoted through the Respondent's web site.
The Complainant concludes by referring to at least one Domain Name Dispute Resolution Procedure in which the Respondent was required to transfer the disputed domain names to the complainant/trademark holder (see Friends Provident Management Services Ltd. v. River Cruise Investments Ltd., DRS05157).
Further, the Complainant refers to five WIPO UDRP decisions in which a William Vaughan, listed as being from various locations in Australia, was required to transfer the disputed domain names: Touro College v. William Vaughan, SMTM Investments, Ltd.,
WIPO Case No. D2007-1813; Trans World Entertainment Corp. v. William Vaughan, WIPO Case No. D2007-1907; Nine West Development Corp. v. William Vaughan, smtm investments ltd,WIPO Case No. D2008-0098; Deceuninck NV v. William Vaughan, smtm investments ltd,
WIPO Case No. D2007-1911; Adecco S.A. v. William Vaughan, SMTM Investments Ltd,
WIPO Case No. D2008-0095.
The Complainant suggests this is the same William Vaughan who is listed as the administrative technical and billing contact for the Respondent.
The Complainant reports that the Panels in these cases noted that Mr. Vaughan had used domain names confusingly similar to the complainants' marks to provide links to competitors of the complainants.
The Complainant concludes there appears to be a pattern of infringing behaviour on the Respondent's part demonstrating bad faith.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
To support its position the Complainant relies on the name WARNER INSURANCE COMPANY which it also characterizes as a mark. Certainly it is a trade name. The question is whether it can also be considered to be a service mark or trademark, in order to be relevant under paragraph 4(a)(i) of the Policy. The Complainant argues that through its subsidiary Warner Insurance Company the Complainant provides automobile and umbrella (liability) insurance under the trademark WARNER INSURANCE COMPANY, and that as of June 30, 2008 23,580 policies were issued under this name and mark generating a total of USD31,798,068 in annualized premiums per year. The Complainant has produced print-outs from its web site at “www.response.com” as evidence of its advertising and marketing under WARNER INSURANCE COMPANY. In these print-outs the Complainant lists operating companies, by state, apparently members of the Complainant's insurance group of companies, under their trade names such as Warner Insurance Company. At the same time the trade name serves to identify the insurance services available from the Complainant, and so is used as a service mark. The Panel is satisfied that there has been sufficient use of WARNER INSURANCE COMPANY in connection with services offered by the Complainant for it to be considered a service mark. See Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,
WIPO Case No. D2001-0932; Endeavors Technology, Inc. v. Dick In Jar,
WIPO Case No. D2001-0770; English Harbour Entertainment Limited v. RaveClub Berlin, WIPO Case No. D2002-0287.
The addition of the gTLD identification “.com” and the elimination of the spacing between the three words forming the service mark are irrelevant for purposes of this decision. The Panel finds that the disputed domain name is identical, for purposes of the Policy, to the Complainant's service mark WARNER INSURANCE COMPANY in which the Complainant has rights.
The Complainant also relies on its registered United States trademark W WARNER INSURANCE COMPANY and design, in which clearly the Complainant has rights. In this mark, the letter “w” in fancy script form serves largely as decoration. The disputed domain name includes all three words, except for the “w”, in the reading matter in this registered trademark, to which the Panel finds the disputed domain name is confusingly similar.
The first criterion for a successful challenge under paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
Since the Respondent has not replied to the Complaint, in considering this criterion under paragraph 4(a) of the Policy the Panel is limited to the evidence and arguments put forward by the Complainant.
There is no evidence in the record before the Panel of any situation which would indicate the Respondent has rights or legitimate interests in the disputed domain name, such as an indication that the Respondent had been commonly known by the disputed domain name, or had made a legitimate non-commercial or fair use of it, or had made bona fide preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant asserts that it never licensed its registered or common law trademark to the Respondent for use in connection with the disputed domain name or otherwise.
In the light of the evidence placed before it, the Panel finds it has been established that the Respondent has no rights or legitimate interests in the disputed domain name, and the second criterion for a successful challenge under paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad Faith
In the absence of any explanation from the Respondent and in view of the fact that the disputed domain name is identical to one of the Complainant's marks and confusingly similar to the other, it is reasonable to conclude that the disputed domain name was the result of a conscious decision to copy the Complainant's marks. The most likely purpose for doing so would have been an attempt to attract for commercial gain Internet users to the Respondent's web site. In fact, printouts from this web site produced by the Complainant show that it is used to divert viewers who visit this web site to Complainant's competitors, particularly in the auto insurance industry.
The Complainant has referred to a Domain Name Dispute Resolution Procedure in which the Respondent herein, also the respondent in that case, was required to transfer the disputed domain name to the complainant/trademark holder, on the ground of abusive registration of the disputed domain name. In addition, the Complainant has referred to five WIPO UDRP decisions in which the respondent was a William Vaughan, listed as being from various locations in Australia, who was required to transfer the respective domain names involved on grounds including bad faith registration and use. The Complainant suggests this is the same William Vaughan who is listed as the administrative, technical and billing representative for the Respondent in this case. In the absence of a response and an explanation from the Respondent, the Panel is prepared to accept the Complainant's suggestion, which indicates a pattern of abusive registrations on behalf of the Respondent.
In view of all the above, including the failure of the Respondent to answer any of the foregoing charges, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
The third criterion for a successful challenge of the domain name registration has been met.
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, <warnerinsurancecompany.com>, be transferred to the Complainant.
Joan Clark Sole Panelist
Dated: January 21, 2009
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