WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CGNU Plc. v studio Promoart
Case No. D2001-1421
1. The Parties
The Complainant is CGNU Plc. St. Helen�s 1 Undershaft, London, EC3P 3DQ, Great Britain, and is represented by Ms. Siobhán Leslie.
The Respondent is studio Promoart, Krakow, 31-416 Poland. Its administrative, technical and billing contact is Radoslaw Wal, at the address of the Respondent.
2. The Domain Names and Registrar
The domain name at issue is . The Registrar is NamesD, Inc. (NamesDirest), PO Box 637, Los Galos 637, CA 95031, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on December 3, 2001, and hardcopies were received by the Center on October 10, 2001. The Center acknowledged receipt of the Complaint on December 5, 2001.
On December 7, 2001, the Center sent to NamesDirect a request for verification of registration data. On December 12, 2001, NamesDirect confirmed that it is the Registrar, that the Respondent is the Registrant of the domain name , and that the administrative, technical and billing contact is Radoslaw Wal, at Respondent�s address.
The Center asked on December 7 the Complainant to submit an address of the Registrar and the Complainant complied with this request on December 10, 2001. Furthermore, the Complainant submitted on December 13, 2001, an amendment (Amendment 1) to the Complaint and on January 14, 2002, a further amendment (amendment 2) to the Complaint.
On December 18, 2001, the Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy and the WIPO Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
At the same day, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. Since the Respondent did not submit a Response within the deadline granted, the Center sent, on January 10, 2002, a Notification of Respondent�s Default.
On January 17, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
Pursuant to Paragraph 3(b)(viii) of the Rules, a Complainant shall specify the trademark(s) or service mark(s) on which the Complaint is based, for each mark describe the goods or services with which the trademark is used or intended to be used and, pursuant to Paragraph 3(b)(xv) of the Rules, the Complainant shall annex a copy of any registration on which the Complaint relies. Whilst the Complainant, in its amendment 1 to the Complaint, submitted to provide insurance, reinsurance and financial services and to own a Community Trade Mark registration and a UK trademark registration, it failed to describe the goods or services with which the trademark is used or intended to be used and to submit evidence, such as copies of the registration, of any trademark or service mark registration upon which the Complaint relies.
Considering that, pursuant to Paragraph 12 of the Rules, in addition to the Complaint and the Response, the Administrative Panel may request further statements or documents from either of the Parties, ensuring that the Parties are treated equally and each Party is given a fair opportunity to present its case according to Paragraph 10(c) of the Rules, the Panelist issued on January 21, 2002, the following Procedural Order:
"1. Based on the Policy (4.a second paragraph) and the Rules (3.b (xv)) you must prove your rights in a trademark. You may submit such evidence by supporting documents such as a copy from the Community Trademark Register as concerns the Community Trademark Registration mentioned in Amendment 1 to the Complaint. You may transmit this evidence by fax or by email. Even an extract from the data of the Office for Harmonization in the Internal Market, which can be downloaded from the website of the Office under "CTM-Online" would be sufficient evidence of your CTM registration.
2. Since you should have been aware of this requirement of the Rules, and since it is easy to provide such evidence, you have 48 hours to comply with this order, by sending the evidence to the Center with copy to the Respondent.
3. Upon receipt of such evidence, the Respondent shall have an opportunity to make any comments thereon within 48 hours."
On the same date, the Center notified such order by e-mail to the Complainant with copy to the Respondent.
Within the time limit set the Complainant submitted copies of registration certificates for its trademark CGU. The Respondent did not submit comments.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is January 31, 2001.
4. Factual Background
A. Complainant
The Complainant is the holding company of a group of companies providing insurance, reinsurance and financial services. It is the owner of registrations for the service mark CGU, amongst others for the two following Community Trade Mark registrations: No 808139, registered on February 28, 2000, with application date of April 27, 1998, and priority of an earlier UK application dated February 24, 1998, consisting of the word mark CGU, in classes 35, 36 and 42; and No. 841 635, registered on January 5, 2000, consisting of a special graphic representation of the letters "CGU" in colors. Copies of the registration certificates of the Office for Harmonization in the Internal Market, have been submitted by the Complainant following the Panelist�s order dated January 21, 2002. In view of the recent registrations of the Complainant�s mark CGU there is no doubt that it has rights in that mark.
The Complainant traded under the name "CGU" until the year 2000 and, according to information contained in its cease and desist letter dated November 1, 2001, to the Respondent, annexed as evidence to the Complaint, there is still considerable goodwill attached to this name and to the service mark CGU in the mind of the public, particularly as many people will still own CGU insurance policies.
The Respondent has not contested the submissions and evidence of the Complainant.
B. Respondent
The Respondent registered, according to the Registrar, on September 24, 2001, the domain name . The Registrar indicates two domain name servers for the domain name, but adds that it appears that the servers have been removed.
5. Parties� Contentions
A. Complainant
The Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent failed to submit a Response to the Complaint within the time limit set by the Center and did not react on the submission of evidence of the CTM registrations of the Complainant following the Panelist�s order.
However, before a Response to the Complaint was requested by the Center, Radoslaw Wall, administrative contact of the Respondent, in an email dated December 8, 2001, informed the Center that an US application for registration of the service mark CGU by Commercial Union Corporation, Boston, USA, filed on May 18, 1998, had been abandoned on August 31, 1998. He concluded: "So, now domain CGU is not trade mark! and I thing that is finish problem."
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
i) the domain name is identical or confusingly similar to a trademark or service mark ("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.
i) Confusing similarity with a mark in which the Complainant has rights
The domain name is not identical with the trademark CGU in which the Complainant has rights. However, the domain name integrates in its entirety the word mark CGU, followed by the descriptive term "group" (the generic tld indicator ".com" cannot be taken into consideration when judging confusing similarity). Such combination of the trademark CGU with the term "group" is under trademark law principles likely to be understood by consumers as being a descriptive addition to the trademark CGU and, when used as a domain name, it is likely to be understood as providing a link to a website belonging to a group of companies, represented by the owner of the trademark or trade name CGU. Since the Complainant until recently traded under the name CGU, there is also a likelihood of confusion of Internet users between a website "www." and the website which the Complainant entertains under the domain , in the sense that users of the website "www." would expect to arrive at the website of the Complainant or at least at a website linked to the Complainant. This likelihood of confusion is the more evident as many of the Complainant�s clients still own insurance policies, issued under the CGU name/mark. The domain name is therefore confusingly similar with the trademark CGU in which the Complainant has rights.
ii) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has never used the domain name in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use. No doubt, the Respondent is not known at all under the name , since it never became active under that name. Finally, the Respondent itself has not submitted to make or to intend to make a legitimate noncommercial use of the domain name. It has chosen not to submit any Response to the Complaint.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name .
iii) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b)(i) mentions registration of 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 a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.
A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent�s out of pocket expenses in registering the domain name.
There are strong indications in the evidence submitted by the Complainant that the Respondent intended to sell the domain name to it for consideration in excess of out-of pocket expenses:
On October 17, 2001, a John Greg, acting for , sent an e-mail to Norwich-Union.Co, which is part of the group, represented by the Complainant, with the following message:
"hallo, if You can cooperation with me about project design on site www.CGU-G please notify me."
Another e-mail was sent by him to Norwich-Union on October 18, 2001:
So, possibly I can make new site for Yours firm, or it will be only alias for domain www. Offer, for me yours commercial proposition, ok?
I will be waiting, John.
The Representative of the Complainant replied on October 19, 2001:
We do not wish you to make a site for us or in any way to make use of the name CGNU or any name related to CGNU or its operations.
After having responded on October 21, 2001: "What a shame", John Greg, on October 26, 2001, sent a further e-mail to the Representative of the Complainant, reading as follows:
"Hallo again,
So, if you want this domain or no?
John."
The representative of the Complainant requested on November 1, 2001, Mr. Greg as representative of the Respondent to cease using the domain name and to provide the Complainant with a written confirmation thereof (this letter is also referred to under 4 A).
The Respondent did not reply to this request and apparently abandoned its attempt to interest the Complainant in its domain name. Therefore, the Respondent did not make any proposal as to the conditions for selling the domain name to the Complainant. However, it had asked the Complainant to make a commercial proposition. This means that the Respondent tried to receive an offer from the Complainant and under the circumstances it would have made no sense for the Respondent to register and to try repeatedly to sell the domain name to the Complainant, if he had not had the intention to sell the domain name in excess of out of pocket expenses.
There is further evidence that the Respondent registered the domain name in bad faith: Apparently the Respondent is well aware of search possibilities for applicants of domain names, since in an e-mail to the Center dated December 8, 2001, it submitted that a trademark application of Commercial Union Corporation, Boston, USA for the mark CGU in the United States had been abandoned in 1998. In its e-mail, it drew from this search result the wrong conclusion that CGU would be no trademark. The Respondent apparently also has a very good knowledge of the Complainant as a group of companies. The latter can be seen from several facts: (i) from the very beginning the Respondent sent its e-mails to an address at Norwich-Union CO UK, apparently a UK-company belonging to the Complainant; (ii) the Respondent referred to an abandoned trademark registration of Commercial Union Corporation, Boston, USA, a corporation, which he must have considered to belong to the Complainant; (iii) the Respondent made a proposal in its e-mail dated October 18, 2001, that the Complainant could use the domain name as alias for the domain . From these facts the Panelist concludes that the Respondent was well aware of the Complainant�s earlier use of the trade name and of the trademark CGU, when he registered the domain name . He may not have been aware of the service mark registrations of the Complainant, however, relying on incomplete search results on the protection of a trademark, which a person has become aware of as belonging to somebody else, and which that person nevertheless intends to incorporate in a domain name application, is no excuse for bad faith. This is the more true as registration of a trademark or service mark is no condition for the protection of rights in such a mark against registration and use in bad faith. The fact that the Respondent attempted to sell the domain name to the Complainant, is also a clear indication that it believed that the Complainant would have continued Interest in its earlier trade name (which at the same time is its valid trademark) CGU.
These considerations, together with the evidence submitted by the Complainant, as concerns the failed attempt of the Respondent to enter into a transaction with the Complainant relating to the domain name , lead the Panelist to conclude that the Respondent registered and is using that domain name in bad faith (that the Respondent after the Complainant�s cease and desist letter dated November 1, 2001, apparently abandoned its attempt to sell the domain name to the Complainant, does of course not exclude the application of the Policy).
The Panelist finds itself confirmed in its conclusion that the Respondent has registered and is using, by trying to sell for a sum in excess of out pocket expenses, the domain name in bad faith, by the fact that the Respondent registered and offered for sale another domain name: (case D2001-1152; see also case D2000-1529 as concerns rights of the Complainant in the trademark "Commercial Union") to the Complainant. It cannot seriously be considered as being realistic that the Respondent had twice by chance registered domain names, conflicting with trademarks of the Complainant, and offered them to the Complainant for sale, without acting in bad faith. Since the Respondent did not submit any argument as to its intentions when registering the domain name , such assumption can therefore be excluded.
The Panelist is therefore satisfied that the Respondent has registered and is using the domain name in bad faith.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(I) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: January 31, 2002
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