WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

U K lnsurance Limited v. Contact Privacy Inc. Customer 0145193713 / Marco Ciufoli

Case No. D2017-1559

1. The Parties

The Complainant is U K lnsurance Limited of Leeds, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Sipara, United Kingdom.

The Respondent is Contact Privacy Inc. Customer 0145193713 of Toronto, Canada / Marco Ciufoli of Rome, Italy, self-represented.

2. The Domain Name and Registrar

The disputed domain name <directline.cloud> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 11, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2017.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2017. Pursuant to a request from the Respondent, the due date for submission of a Response was extended to September 13, 2017. The Response was filed with the Center on September 8, 2017.

The Center appointed Mladen Vukmir as the sole panelist in this matter on September 27, 2017. 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

(i) The disputed domain name was created on July 18, 2016 (Annex 1 to the Complaint);

(ii) The Respondent is the registrant of the disputed domain name as confirmed by the Registrar in verification response as of August 10, 2017;

(iii) The Complainant is the holder of the following DIRECT LINE and DIRECTLINE.COM trademark registrations (Annex 4 to the Complaint):

(iv) The DIRECT LINE brand of the Complainant is recognized as a “superbrand” in the Consumer Superbrands 2016, and the Complainant has been listed as the fifth largest general insurer and number one private and domestic motor insurer in the UK (Annex 5 to the Complaint). The Complainant’s DIRECT LINE trademarks have been used on the Internet and in the media, including advertising campaign run with Harvey Keitel (Annex 6 to the Complaint and the Panel’s insight into the Complainant’s website “www.directline.com”);

(v) the disputed domain name resolves to a website which offers consultancy services related to insurance (Annex 7 to the Complaint and claims of the Respondent from the Response);

(vi) the Respondent offered to sell the disputed domain name to the Complainant for the amount of GBP 1,500 (Annex 9 to the Complainant).

5. Parties’ Contentions

A. Complainant

The Complainant, essentially, asserts that:

(i) The Complainant has used its DIRECT LINE trademark since it started trading in 1985 as the UK’s first telephone-only insurance business. The trademark was mentioned in the Consumer Superbrands 2016 publication. The Complainant itself has been listed as the fifth largest general insurer and number one private and domestic motor insurer in the UK.

(ii) The Complainant’s marks have been used extensively on the Internet, in newspapers, on television as well as other forms of media. This includes the popular recent advertising campaign run with Harvey Keitel.

(iii) The Complainant’s domain name, <directline.com>, was registered on June 2, 1997. It has approximately 29,000 visits per day and is currently ranked as site No. 38,536 in the world by Alexa.com.

(iv) The Complainant owns an extensive portfolio of registered trademarks in the European Union and UK including the word marks DIRECT LINE and DIRECTLINE.COM in Class 36 – insurance services.

(v) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, amongst other, because:

- The disputed domain name is highly similar to the Complainant’s UK registered trademark DIRECTLINE.COM in that it differs only by the different generic Top-Level Domain (gTLD), using “.cloud” instead of “.com”. There is a wide range of gTLDs to choose from, yet the Respondent selected the gTLD suffix “.cloud”. This establishes the Respondent’s intention to register a domain that is as similar to the Complainant’s marks as possible;

- The combination of the gTLD suffix “.cloud” with the Complainant’s DIRECT LINE trademark, creates the impression that the Respondent is part of the Complainant's business and is able to offer and manage the Complainant’s services via cloud computing services, which heightens any confusion between the disputed domain name and the Complainant’s DIRECT LINE trademark. The average Internet user would not know whether the Complainant’s services can be accessed by cloud computing services, which further increases the likelihood of confusion between the disputed domain name and the Complainant’s mark DIRECT LINE.

- The disputed domain name is very similar to the registered rights in the Complainant’s mark DIRECT

LINE, the only difference being the suffix, which is a technical requirement of registration. The dominant elements of both the Complainant’s marks and the disputed domain name are the identical two words, “direct line”. The disputed domain name and the Complainant’s marks are visually and aurally highly similar. The Complainant’s marks are used primarily for insurance services and the disputed domain name is used to direct consumers to competing insurance websites.

- Through the Complainant’s marks and the use of the DIRECT LINE trademark (and the website “www.directline.com”), the Complainant has built up substantial reputation and goodwill in its trademarks DIRECT LINE and DIRECTLINE.COM.

(vi) The Respondent has no rights or legitimate interests in respect of the disputed domain name, since:

- The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the Complainant's marks and in this respect the Complainant refers to decisions issued by panels in earlier UDRP cases: Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; PRL USA Holdings Inc. v. LucasCobb, WIPO Case No. D2006-0162; Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819.

- Whilst the overall burden of proof in demonstrating a lack of legitimate interest rests with the Complainant, this can result in the often impossible task of proving a negative. In this regard the Complainant cites the panel’s decision in the UDRP case Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455).

- The services offered by the third parties are in direct competition with the Complainant and the Complainant’s DIRECT LINE trademarks which are registered for competing insurance services. The disputed domain name is highly likely to have been registered “in the hope and expectation” of attracting traffic from “Internet users searching for information about the business activities of the trademark owner” (in this respect, the Complainant refers to the panel decision in the UDRP case Owens Corning v. NA, WIPO Case No. D2007-1143). It is submitted that the diversion of traffic from the Complainant’s website to competitors for money does not constitute a legitimate interest in the disputed domain name.

(vii) The disputed domain name was registered and used in bad faith:

- The disputed domain name has been registered using a privacy proxy service by the Respondent. Although the use of privacy or proxy registration services is not in and of itself an indication of bad faith, it has been established that the manner in which it is used in certain circumstances may constitute a factor indicating bad faith (in this regard, the Complainant refers to the panel decision in the UDRP case Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0523).

- The disputed domain name is used to misdirect Internet users looking for the Complainant’s website to third-party websites that are not affiliated with the Complainant.

B. Respondent

The Respondent, in essence, states that:

(i) The Respondent purchased a disputed domain name available on the market by choosing a name consisting of two simple and common dictionary words which do not represent any specific name or brand specific name but simply coincide with the Complainant’s company.

(ii) It is not enough to record two common words in all the languages of the world (and not names or marks) to be eligible for their exclusive use.

(iii) The disputed domain name currently resolves to an active page providing consultancy services in the insurance sector and helps individuals in controversies against insurance companies.

(iv) The Respondent is making a noncommercial use of the website under the disputed domain name as consultations are completely free.

(v) The disputed domain name is not used to mislead Internet users.

(vi) The Complainant has on their own initiative made a bid of GBP 500. However, this amount does not cover the expenses incurred at around GBP 1,500 as in addition to the costs of the disputed domain name more money was spent for promoting the website under disputed domain name, which can be evidenced with the invoices. The mentioned amount of GBP 1,500 cannot be considered as attempt to use the domain name for commercial gain.

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the informal Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:

(i) the domain name is confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name is confusingly similar to the Complainant’s DIRECT LINE trademark.

Primarily, the Panel emphasizes that it is generally accepted that ownership of a registered trademark by a complainant is generally sufficient to satisfy the threshold requirement of having trademark rights, see section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has submitted sufficient evidence to show that it is the owner of a number of DIRECT LINE trademarks, as noted under section 4, above.

Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a side-by-side comparison between the trademark and the disputed domain name to determine whether the relevant trademark would be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, geographical or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. See sections 1.7 and 1.8 of the WIPO Overview 3.0.

After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name incorporates the Complainant’s DIRECT LINE trademark in its entirety, and that the same trademark is clearly recognizable as such within the disputed domain name without any modifications.

In connection to the aforesaid, the Panel understands from the Response that the Respondent claims that the Complainant’s DIRECT LINE trademark consists of two common words and therefore is not eligible for exclusive use. From the documents presented by the Complainant, it arises that the Complainant is the holder of a number of DIRECT LINE trademarks which are duly registered before competent trademark authorities. As such, these trademarks provide to the Complainant all the exclusive rights that are usually granted with such trademark registrations. Therefore, this Panel cannot accept said arguments of the Respondent.

With respect to the applicable gTLD “.cloud” suffix in the disputed domain name, it is generally accepted that it may be disregarded under the confusing similarity test (see section 1.11 of the WIPO Overview 3.0).

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name is identical or confusingly similar to its DIRECT LINE trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

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

As noted by previous UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, and as summarized in section 2.1 of the WIPO Overview 3.0 : “[…]While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element […]”.

In the present case, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name. According to the Panel’s findings, the Respondent failed to produce appropriate allegations and evidence demonstrating rights or legitimate interests in the disputed domain name.

Namely, the Complainant has established that it is the owner of a number of DIRECT LINE trademarks in various jurisdictions, as well as that it has used the same trademarks widely on the market including through the Complainant’s website “www.directline.com” so that it may be recognized as “well known” within relevant circles.

The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its DIRECT LINE trademarks, or to apply for or use any domain name incorporating the same trademarks.

Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name. To the contrary, from the information available on the website to which the disputed domain name resolves, it arises that the Respondent is offering its services under the name “Studio Tecnico M.C.” while the Respondent’s name appears to be “Marco Ciufoli”.

In addition, there is no evidence in the case file or otherwise apparent to the Panel that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.

From the evidence presented by the Complainant and the claims of the Respondent, it arises that the disputed domain name resolves to a website offering consultancy services in the field of insurance and therefore such services may be considered in a broader sense as competing services to those provided by the Complainant who is engaged in the insurance business.

Having in mind the renown of the Complainant and its DIRECT LINE trademarks, in this Panel’s opinion it can be safely concluded that the Respondent deliberately chose to include the Complainant’s DIRECT LINE trademarks in the disputed domain name, in order to trade on the renown of the Complainant’s trademarks and to achieve commercial gain by misleadingly diverting consumers to the Respondent’s website. Especially since the two words of which the Complainant’s DIRECT LINE trademarks consist of, do not refer nor may be connected in any way with the insurance business. It would be too much of a coincidence for the Respondent to choose these two words for providing consultancy services related to insurance without being aware of the Complainant or the Complainant’s insurance business and the Complainant’s DIRECT LINE brand.

The Respondent claims that it is making noncommercial use of the disputed domain names since the consultations in the field of insurance offered on the website to which the same domain name resolves to are completely free of charge. However, according to the Panel’s findings, such claims are in contradiction with the information provided on the latter website where it is stated that the consultations are free of charge to the damaged party because the “fees are paid by the insurance company”. Therefore, it appears that the activity in which the Respondent seems to be involved in is ultimately a commercial activity.

Such use of the disputed domain name by the Respondent cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with views taken by panels in earlier UDRP cases (see, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Canadian Tire Corporation, Limited v. Texas International Property Associates NA NA, WIPO Case No. D2007-1407; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021 and Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001.

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce sufficient arguments or evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

Owing to any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that the Respondent has registered and used the disputed domain name in bad faith.

First, this Panel holds that the Respondent was aware of the Complainant, its insurance business and/or the Complainant’s DIRECT LINE trademarks. As stated earlier, in this Panel’s view, it would be too much of a coincidence that the Respondent decided to register and use the disputed domain name to provide consultancy services related to insurance services by using the words “direct line”, as these two words have no connection to the insurance business. Especially since there is no evidence that the Respondent has ever been commonly known by these two words (from the information available on the website to which the disputed domain name resolves to it arises that the Respondent is offering its services under the name STUDIO TECNICO M.C. while the Respondent’s name appears to be Marco Ciufoli). Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see section 3.2.2 of the WIPO Overview 3.0).

Second, and as already discussed above, the disputed domain name resolves to a website used to provide consultancy services in relation to insurance. The Panel believes that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website. The Complainant’s DIRECT LINE trademark in the disputed domain name certainly adds weight as a signal to the potential customers and the disputed domain name clearly benefits from the same. For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be especially applicable in this case, since the Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. See, e.g., the following decisions issued by panels in earlier UDRP proceedings:

(i) Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 (<rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com>): “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites”;

(ii) PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292 (<pepsistrawberry.com>): “The fact that the Respondent elected to register a domain name substantially comprising the ‘PEPSI’ trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant”;

(iii) Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester, WIPO Case No. D2015-1556 (<radiomariamalawi.com>): “The Panel finds that the Complainant’s trademark is well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark as the Disputed Domain Name is linked to a parking page containing several links to radio stations and live broadcast services. The Panel finds that the Disputed Domain Name was registered in bad faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy”.

Third, from the correspondence between the Complainant’s representative and the Respondent, it arises that the Respondent offered to sell the disputed domain name to the Complainant for the amount of GBP 1,500. In this Panel’s view, it is safe to assume that the latter amount represents the consideration that exceeds the registration and/or maintenance costs for the disputed domain name, i.e., out-of-pocket expenses directly related to the disputed domain name. The Respondent claims that it had additional costs for promotion of its business; however, provides no evidence to support its claims. Such comportment of the Respondent further supports this Panel’s opinion that the disputed domain name has been registered in bad faith within the meaning of paragraph 4(b)(i) of the Policy. This is in line with positions taken by panels in earlier UDRP cases under which the evidence of offers to sell the domain name are used to show bad faith on the side of the respondent (see section 3.1 of the WIPO Overview 3.0).

Fourth, although the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, this Panel holds that the use of such service in this case may be taken as further indication of bad faith on the side of the Respondent, especially taking into account the manner in which the disputed domain has been used by the Respondent. Such position of the Panel is in line with findings of previous UDRP panels (see section 3.2.6 and 3.6 of the WIPO Overview 3.0, and cases cited therein).

Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) 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 <directline.cloud> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Date: October 13, 2017