The Complainant is Old Republic Home Protection Co. Inc. of California, United States of America represented by Foley McIntosh Frey & Claytor of United States of America.
The Respondent is Lena Hawkins of Kentucky, United States of America.
The disputed domain name <oldrepublichomewarrantys.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 12, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On February 14, 2010, Melbourne IT 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” 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 February 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 12, 2010.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 17, 2010. 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.
Since 1974, the Complainant (“ORHP”) has offered for sale home warranties, and does business in 46 states in the United States (“US”). ORHP also offers for sale home warranties through its web site “www.orhp.com”, which it registered on July 15, 1998.
ORHP is a subsidiary of Old Republic International Corporation (the “Parent”). The Parent corporation registered in the US the service mark OLD REPUBLIC and design on March 15, 1994, which indicates a date of first use on July 13, 1992, for financial and insurance services. The Parent also registered OLD REPUBLIC and design on May 27, 2008, with a first use date of 2003, for underwriting extended warranties in the automotive industry. The Parent registered OLD REPUBLIC on May 27, 2008, with a first use date of April 30, 1931, for insurance services underwriting extended home warranties. ORHP has its Parent's explicit consent to use these service marks.
The Respondent registered the disputed domain name on December 3, 2009. The website has a heading “Old Republic Home Warranty”, and what appears to be an article entitled “The Benefits of Having an Old Republic Home Warranty”, which describes an Old Republic warranty and its coverage. The page also contains links to several of ORHP's competitors, which actively revert to those competitors' sites, on which they offer home warranties.
ORHP contends that its trade name, OLD REPUBLIC HOME WARRANTY, is entitled to the same protection as a trade mark under US law, and that Respondent's use of “Old Republic Home Warranty” creates a likelihood of confusion, and infringes that trade name. ORHP also contends that Respondent's use infringes the Parent's service marks, OLD REPUBLIC, in that it contains the service mark in its entirety.
ORHP also contends that Respondent has no rights or legitimate interests in use of ORHP's trade name or the Parent's service marks.
Finally, ORHP contends that Respondent has registered and used the domain name in bad faith, particularly in that Respondent used the domain name for commercial gain.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the UDRP provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
ORHP has used the trade name OLD REPUBLIC HOME WARRANTY since 1974 to sell home warranties. Its Parent registered OLD REPUBLIC as a trademark on May 27, 2008, with a first use date of April 30, 1931, for insurance services underwriting extended home warranties. ORHP has its Parent's explicit consent to use its service marks. The ORHP has shown that it has rights to use the trade name OLD REPUBLIC HOME WARRANTY and the OLD REPUBLIC service mark.
The disputed domain name <oldrepublichomewarrantys.com> contains ORHP's full trade name, and Parent's full service mark. It is immaterial in this case for the Panel to make a finding of confusing similarity that Respondent's domain name has added an “s” to the end of ORHP's trade name. See, e.g., Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061.
At the top of its home page Respondent's web site shows OLD REPUBLIC HOME WARRANTY, which is identical and confusingly similar to Complainant's trade name, and contains the full service mark OLD REPUBLIC owned by ORHP's Parent.
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant's registered mark, and that Complainant meets the first criterion of paragraph 4(a) of the Policy.
Respondent is not affiliated with or related to ORHP or its Parent, nor is Respondent licensed or authorized to use the OLD REPUBLIC service mark or the OLD REPUBLIC HOME WARRANTY trade name. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in her own favor.
The Panel finds that Respondent does not have any rights or legitimate interests in respect of the domain name and that Complainant meets the second criterion of paragraph 4(a) of the Policy.
The disputed domain name reverts to a website that has a heading “Old Republic Home Warranty”, and what appears to be an article entitled “The Benefits of Having an Old Republic Home Warranty”, which describes an Old Republic warranty and its coverage. There is no other substantive content on the page. In this Panel's view most Internet users would believe that they have reached ORHP's website. The Panel therefore concludes that Respondent intended to draw ORHP's customers to her website.
The page also contains links to several of ORHP's competitors, which actively revert to those competitors' sites, on which they offer home warranties. It is now a well-known practice to display on a web page or search engine various links to other commercial websites: every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. See Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078. Therefore, in the Panel's view, it seems evident that Respondent has registered and used the disputed domain name with the intent to attract to her website Internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored link(s).
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy.
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 <oldrepublichomewarrantys.com> be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Dated: March 28, 2010