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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Old Republic Home Protection Co., Inc. v. Dvlpmnt, LTD.

Case No. D2013-1634

1. The Parties

Complainant is Old Republic Home Protection Co., Inc. of San Ramon, California, United States of America represented by Claytor Law Group, PC, United States of America.

Respondent is Dvlpmnt, LTD. of Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <oldrepublichomewarranty.com> is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2013. On September 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 25, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 15, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 16, 2013.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 25, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

Complainant has been engaged in the business of offering home warranties to consumers under its corporate name Old Republic Home Protection Co., Inc. for over twenty five (25) years and is licensed to conduct business in forty six (46) states in the United States. Complainant also offers its home warranties over the Internet through its website, “www.orhp.com.” Complainant registered the domain name, <orhp.com>, on July 15, 1998.

Complainant is a wholly own subsidiary of Old Republic International Corporation. Old Republic International Corporation owns the United States trademark registration OLD REPUBLIC with a design element registered on March 15, 1994.

The disputed domain name was registered on January 15, 2004. The website at the disputed domain name resolves to an active website that offers commercial click-through links to websites that appear to be related to the home warranty industry, among others.

5. Parties’ Contentions

A. Complainant

Old Republic International Corporation established service mark rights in OLD REPUBLIC prior to the date Respondent registered the disputed domain name.

Complainant is a wholly owned subsidiary of Old Republic International Corporation and has been using the trademark OLD REPUBLIC with consent and authorization of Old Republic International Corporation. In order to prove this authorization to use the trademark, Complainant attached to the Complaint the Declaration of Ms. Gallagher, President of Complainant and the Declaration of Mr. Mueller, an officer from Old Republic International.

According to the affidavit, Ms. Gallagher is an officer Old Republic Home Protection and its predecessor, and has been a president of Old Republic Home Protection for 18 years. She states that regularly attended board meetings of Old Republic International Corporation and can state from her own personal knowledge deriving from attendance to those meetings, as well as other meetings and discussions that she has had with senior management of Old Republic International Corporation that Old Republic Home Protection Co. has consent from its parent, Old Republic International to use the service mark OLD REPUBLIC.

According to the affidavit, Mr. Mueller, an officer from Old Republic International, attest that Old Republic Home Protection Co. is a wholly owned subsidiary of Old Republic International Corporation, and has been using the OLD REPUBLIC service mark with consent of Old Republic International Corporation.

According to Complainant, those affidavits attest to the following facts:

- for more than twenty five (25) years, Complainant has been engaged in the business of offering home warranties to consumers under its corporate name Old Republic Home Protection Co., Inc. Complainant presently is licensed to do business in forty six (46) states in the United States as stated above.

- Complainant is a wholly owned subsidiary of Old Republic International Corporation, a Delaware Corporation, and Complainant has the explicit consent of its parent to use the service mark OLD REPUBLIC.

- Complainant's trade name, the trade name it is authorized to use, and its registered domain name enjoy an excellent reputation, and Complainant has built up valuable goodwill in each. Complainant has extensively promoted its trade name, the service mark and its domain name through the use of a variety of forms of advertising.

- Complainant’s trade name, the service mark OLD REPULIC, and Complainant’s domain name, <orhp.com>, and each of them, have become widely known among members of the public throughout the United States as a source of home warranty plans, and such name, mark and domain name identify and distinguish Complainant’s home warranty plans from others and thus have acquired a secondary meaning.

The disputed domain name <oldrepublichomewarranty.com> is confusingly similar to the OLD REPUBLIC service mark owned by Old Republic International Corporation.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and is using the disputed domain name in bad faith.

Complainant states that the disputed domain name contains the name “oldrepublichomewarranty.com” that appears on the screen. Directly below that, there is a list of “sponsored links”. Complainant states that the first name on the list was “American Home Shield”, along with a link to “www.ahshome.com”. That site is the official site of American Home Shield, a competitor of Complainant. Complainant invokes paragraph 4(a)(iii) of the Policy.

Complainant requests the transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy requires Complainant in a domain name dispute to establish the three elements given under paragraph 4(a) of the Policy to obtain the remedy of transfer or cancellation of the domain name. These three elements are:

(a) the domain name registered by Respondent is identical or confusingly similar to a mark in which Complainant has rights; and

(b) Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name was registered and is being used in bad faith by Respondent.

A. Identical or Confusingly Similar

Complainant has established that Old Republic International Corporation owns trademark registration for the OLD REPUBLIC service mark. The owner of the trademark is a separate operational legal entity from Complainant called Old Republic International Corporation. Complainant asserts to be a licensee of the trademark holder.

The consensus view states that in most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2.0 (“WIPO Overview 2.0”), Paragraph 1.8).

The Panel notes that Complainant filed a previous case for the same disputed domain name against a different respondent (see Old Republic Home Protection Co., Inc. v. Direct Privacy ID 7F9AB, WIPO Case No. D2012-2366). The previous complaint was rejected because, according to the panel, Complainant had failed on the previous record to establish that it owned rights in the OLD REPUBLIC service mark pursuant to Policy, paragraph 4(a)(i), or that it had the right to use the OLD REPUBLIC service mark.

In light of the evidence submitted in the current case, the Panel is of the view that Complainant is authorized to claim such trademark rights in the mark OLD REPUBLIC in the present administrative proceedings. The Panel finds that the authorization by the parent company as evidenced by the affidavits of Annex 3 and 4 of the Complaint sufficient to establish Complainant’s rights in the trademark for the purposes of the Policy.

The Panel notes that according to this written evidence, Complainant is authorized to use the trademark OLD REPUBLIC. Hence, the Panel concludes that the Complainant has satisfied the threshold requirement of being authorized to claim rights in the trademark OLD REPUBLIC.

Finally, the Panel finds that the disputed domain name <oldrepublichomewarranty.com> is confusingly similar to the OLD REPUBLIC trademark. The addition of the terms “home” and “warranty” does not change this finding, to the contrary, because those terms are generic and related to Complainant service, Internet users may be mislead into thinking that the disputed domain name is related to Complainant.

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.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires Complainant to, at minimum, present a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden of production shifts to Respondent to refute Complainant's averments and to show that it has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy (see WIPO Overview 2.0, Paragraph 2.1)

As Respondent here has not filed a response, Complainant's assertions remain unchallenged. Based on the evidence on record, the Panel finds no indication that Respondent has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.

Further, Complainant has stated that it has given no authorization to Respondent to use its trademark in the disputed domain name, and there exists no connection between the Parties. This establishes that Respondent is not a licensed or authorized user of Complainant trademark. In the absence of any evidence to show Respondent's rights as discussed above, the Panel finds that the use of Complainant's mark in the disputed domain name is not a legitimate use, particularly when Complainant has not authorized its use.

The manner of use of the disputed domain name is also germane for determining rights or legitimate interests. The use of a domain name confusingly similar to Complainant's trademark with the addition of descriptive terms of Complainant’s services with an intention of deriving advantage from user confusion and diverting Internet users to other commercial sites does not confer legitimate rights on Respondent.

The Panel is satisfied that Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

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

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

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

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with 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

It is the view of the Panel that Respondent knew of Complainant at the time of registering the disputed domain name composed of the trademark OLD REPUBLIC and the terms “home” and “warranty”. Both generic terms have an obvious connection with Complainant because they describe the services that Complainant provides under the trademark OLD REPUBLIC. To this Panel, this is clear and direct evidence of bad faith registration of the disputed domain name.

The disputed domain name resolves to a parked website containing advertising links to other websites relating to similar products, including not only Complainant’s OLD REPUBLIC products but also the products of a number of Complainant’s competitors. It is the view of the Panel that in doing so, Respondent intentionally attempts to attract, for commercial gain, Complainant’s costumers to its website and creates a likelihood of confusion with Complainant’s mark as to the source of its website.

Accordingly, the Panel finds that Complainant has established that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <oldrepublichomewarranty.com> be transferred to Complainant.

Pablo A. Palazzi
Sole Panelist
Date: November 10, 2013.

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