Just Car Insurance Agency Pty Ltd. v. Throne Ventures Pty Limited
Case No. DAU2008-0015
1. The Parties
The Complainant is Just Car Insurance Agency Pty Ltd., Melbourne, Victoria, Australia, represented by Middletons Lawyers, Australia.
The Respondent is Throne Ventures Pty Limited, MELBOURNE,VICTORIA, Australia.
2. The Domain Name and Registrar
The disputed domain name <justbikeinsurance.com.au> is registered with NameScout Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2008. On August 1, 2008, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue . On August 7, 2008, NameScout Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 11, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 August 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 8, 2008.
The Center appointed John Swinson as the sole panelist in this matter on September 16, 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 car insurance agency which was established in 1995. The Complainant provides a broad range of car insurance policies to its customers. The Complainant is the registered owner of two Australian Trade Marks including the words “just car insurance”. The first, Australian Trade Mark 906066, is for the words JUST CAR INSURANCE. The second, Australian Trade Mark 906067, is for words JUST CAR INSURANCE which are part of an image of a number plate inside a rectangle.
5. Parties' Contentions
A. Complainant
The Complainant contends that:
The domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.
The Complainant is the registered owner of the two Australian Trade Marks referred to above (see Section 4. Factual Background) (“the Trade Marks”). The Trade Marks were registered on March 13, 2002.
The Trade Marks have been used and promoted extensively throughout Australia on the television and the radio, in newspapers and magazines, at Automotive Shows, in brochures and stationery used to communicate with customers, on buses and billboards and at a website located at “www.justcarinsurance.com.au” (“the Complainant's Website”).
The Complainant relies upon the Trade Marks for its reputation and significant recognition throughout Australia.
The distinctive feature of the disputed domain name are the words “just insurance” which are also the distinctive elements of the Trade Marks. The combination of words in the disputed domain name would not have been legitimately selected by the Respondent unless it was attempting to trade off the Complainant's rights in the Trade Marks.
Replacing the word “bike” with “car” will give consumers the impression that justbikeinsurance is a sub-branch of the Complainant's justcarinsurance operations. This will be confusing and misleading for consumers who will assume that the disputed domain name is related to the Complainant.
The Respondent provides links to insurance services from the website at the disputed domain name which are the same type of services that the Complainant provides in relation to the Trade Marks. Consumers would expect the disputed domain name would be owned by the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent does not meet the criteria for Domain Name Eligibility under the Domain Name Allocation Rules for Open 2LD's. The Respondent does not have any registered business names or company names which match the disputed domain name. The Respondent has not filed any Trade Mark applications for the disputed domain name.
The Respondent is not using the disputed domain name or any corresponding name in connection with a bona fide offering of goods or services.
The Respondent is not commonly known by the disputed domain name. There are no white and yellow page listings for “just bike insurance”.
The Respondent is not making and does not intend to make a legitimate fair use of the disputed domain name. The Respondent selected the disputed domain name to intentionally divert traffic from the Complainant's Website and mislead Internet users into assuming there was a connection between the disputed domain name and the Complainant.
The domain name was registered or subsequently used in bad faith
The Respondent registered the disputed domain name five years after the Complainant registered the Trade Marks.
The Respondent would not have chosen the distinctive combination of words “just bike insurance” unless it was attempting to trade off the Complainant's rights in the Trade Marks.
The Complainant's reputation in the Trade Marks is so substantial and widespread that it is not conceivable that the Respondent would not have had actual notice of the Complainant's rights in the Trade Marks when it registered the disputed domain name. The fact that the Respondent offers links to insurance services similar to those offered by the Complainant evidences that the Respondent knew of the Complainant.
The Respondent's use of the disputed domain name, particularly after receiving two letters of demand and the letter detailing the Complainant's legal position, is bad faith use.
The Respondent registered the disputed domain name with the intention of attracting Internet users familiar with the Complainant, its services and reputation to the Respondents website at the disputed domain name. The Respondent has created confusion as to the existence of an affiliation, sponsorship, endorsement or other connection with the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the Respondent is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect to the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
To prove this element the Complainant must have rights in a name, trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant's name, trademark or service mark.
The Complainant is the owner of two registered marks in Australia containing the words JUST CAR INSURANCE (Trade Mark 906066 and Trade Mark 906067). These Trade Marks were registered on March 13, 2002.
The Panel therefore finds that the Complainant has registered trade mark rights in JUST CAR INSURANCE. The next question is whether the disputed domain name is identical or confusingly similar to the Complainant's JUST CAR INSURANCE Trade Marks.
The disputed domain name is not identical to the Complainant's Trade Marks. It is therefore necessary for the Complainant to demonstrate that the disputed domain name is confusingly similar to the Complainant's Trade Marks.
The dominant feature of the Complainant's Trade Marks are the words “just car insurance”. The only difference between the disputed domain name and the Trade Marks is the replacement of the word “car” with the word “bike”. The Complainant contends that replacing the word “bike” with “car” will give consumers the impression that justbikeinsurance is a sub-branch of the Complainant's justcarinsurance operations.
The Panel considers that the simple appearance of similarity between the phrases “justcarinsurance” and “justbikeinsurance” to an Internet user makes the disputed domain name confusingly similar to the Complainant's Trade marks. Moreover, the Panel agrees that, given the conceptual similarities between the Trade Marks and the disputed domain name (i.e. the use of the words “just” and “insurance” on either side of a term used to describe an automotive vehicle) and the well-known reputation of the Complainant's Trade Marks, Internet users are likely to be confused about the relationship between the Complainant and the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's Trade Marks. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (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 are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name.
The content of the Respondent's website at the disputed domain name does not reflect a bona fide offering of goods or services. The disputed domain name is being used for a pay-per-click (“PPC”) parking page at which advertisements are used to divert customers to, amongst other things, third-party insurance sites. The first Webpage at the disputed domain name contains links to various types of insurance similar to those promoted by the Complainant under the Trade Marks. It is well established that PPC parking pages built around a trademark do not constitute a bona fide offering of goods or services (see for example Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc. v. Navagation Catalyst Systems, Inc.,
WIPO Case No. D2007-1141 and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). The links on the Respondent's website, particularly on the initial WebPage, are clearly based on the trade mark value of the disputed domain name - they are focused on promoting insurance products of the same type sold by the Complainant under the Trade Marks.
There is no evidence that the Respondent is commonly known by the disputed domain name. The Complainant's Trade Marks are distinctive and widely known throughout Australia. They are extensively publicized on television and the radio, in newspapers and magazines, and on billboards and buses. It is well known that the Complainant offers car insurance services to the community. The Respondent has no connection with the Complainant. The Respondent has no trade or service mark rights in JUSTBIKEINSURANCE. There are no White Pages® or Yellow Pages® telephone listings for a business called Justbikeinsurance.
The name Justbikeinsurance would seem to have no real value to the Respondent except as a means of obtaining advantage from the goodwill of the Complainant's well-known mark to generate traffic to its website (at the disputed domain name) by mistake so that the Respondent can potentially receive commercial gain from Internet users who intended to visit the Complainant's Website. It is highly likely that a significant number of Internet users would believe that the disputed domain name would lead to a website offering insurance services for motorbikes from the Complainant. The Respondent is not making fair use of the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered or Subsequently Used in Bad Faith
The Complainant in these proceedings must prove on the balance of probabilities that the domain name was registered in bad faith or that it has subsequently been used in bad faith.
Registered in Bad Faith
Paragraph 4(b) of the Policy enumerates four circumstances which evidence a respondent's registration or use of a domain name in bad faith. The first three of those relate to registration:
“[T]he following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person.”
The Panel is not limited to the application of the circumstances of paragraph 4(b) of the Policy, to determine whether the disputed domain name was registered (or used) in bad faith. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors (see for example Wild West Domains, Inc. v. Neo Jung,WIPO Case No. D2004-0243; Bayer AG v. Daniel H. Davies, Interplanetarium Corp.,WIPO Case No. D2003-0908).
The disputed domain name was created on July 25, 2007 - more than five years after the Trade Marks were registered and used by the Complainant. The Complainant has extensively promoted and used the Trade Marks in connection with its insurance services since 1995. The Panel has no doubt that, prior to registering the disputed domain name, the Respondent was aware of the Complainant and its Trade Marks.
As noted above the name Justbikeinsurance would seem to have no real value to the Respondent except as a means of obtaining advantage from the goodwill of the Complainant's well-known mark. On the website to which the disputed domain name resolves, the Respondent offers, amongst other things, links to third party sites for insurance, airline tickets and dating services. It is difficult to see the connection between some of the services offered at the website to which the disputed domain name resolves and bike insurance. In the Panels view, the evidence suggests that the Respondent, motivated by profit, obtained registration of the disputed domain name to exploit the Complainant's Trade Marks.
The Panel finds that the Respondent obtained registration of the disputed domain name in bad faith on July 25, 2007.
Use in Bad Faith
Paragraph 4(b) of the policy provides that the following circumstance shall be evidence of use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
Given the wide reputation of the Complainant and the Trade Marks in Australia, it is difficult to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name. As noted above, the disputed domain name is confusingly similar to the Trade Marks and it is highly likely that a significant number of Internet users would believe that the disputed domain name would lead to the Complainant's Website. It is also highly likely that the Respondent was aware of the Complainant's Trade Marks when it obtained registration of the disputed domain name.
The Respondent's use of the disputed domain name for a PPC parking page constitutes bad faith use because the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by causing confusion as to whether its website is the Complainant's, is affiliated with the Complainant or is connected with the Complainant's insurance services.
The Panel finds that the Respondent has used the disputed domain name in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <justbikeinsurance.com.au> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: September 24, 2008
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