WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aspen Holdings Inc. v. Christian P. Vandendorpe Case No. D2009-1160 1. The Parties
1.1 The Complainant is Aspen Holdings Inc. of Omaha, Nebraska, United States of America, represented by Hinckley, Allen & Snyder, LLP of United States.
1.2 The Respondent is Christian P. Vandendorpe of Amsterdam, the Netherlands. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2009. On September 1, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 1, 2009, the Registrar 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”).
3.2 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 September 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 25, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 5, 2009. 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
4.1 The Complainant provides product and services in the field of workers' compensation insurance including claims processing. It has used the term “firstcomp” in connection with its products since 1987 and currently provides its services through 7,500 independent agents in 31 states of the Unites States.
4.2 Since January 2003 the Complainant also has used the term “1stquote” to promote its services including as the name of its online application software.
4.3 The Complainant is the owner of United States Registered trade mark No 3,302,240 issued on October 2007 for the word “1stquote” in class 42. The registration certificate for this trade mark records a first use in business of January 1, 2003.
4.4 The Domain Name was registered on January 5, 20031.
4.5 Little is known about the Respondent. He appears to be an individual who resides in the Netherlands. He also appears to have previously been involved in domain name proceedings, having been the respondent in Sociedad Rectora de la Bolsa de Valores de Bilbao, S.A. v. Christian P. Vandendorpe,WIPO Case No. D2001-0093. That case related to the domain name , and the panel held that this was an abusive registration.
4.6 The Domain Name has (at least recently) been used to display web pages that bear all the hallmarks of having been generated by a domain name “parking” and “pay-per-click” service. For example, as at August 31, 2009 “Sponsored listings” displayed on that page included “Term Life Insurance Quote”, “NetQuote Online Insurance” and “Cute Life Quotes”. The page also displayed various “related searches” (most of which seemed to be using the term “quote” in a literary sense) and various “popular categories” of search.
4.7 A “parking” and “pay-per-click” page continues to operate from the Domain Name as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that as a result of its activities it has acquired common law trade mark rights in the United States in the term “1stquote”. It refers to Aspen Holdings, Inc. v. Whois Privacy Inc,WIPO Case No. D2009-0714 in which it states its common law trade mark rights were recognised.
5.2 It claims that the Domain Name is confusingly similar to both its common law and registered trade mark in the term “1stquote”. In short, it maintains that “1stquote” and “firstquote” are “virtually identical in phonetic terms” and that this is sufficient for a finding of confusingly similarity.
5.3 The Complainant asserts that the Respondent does not have any right or legitimate interests in the Domain Name. In this respect it contends that the Respondent is not commonly known by this name, has not used the term in connection with a bona fide offering of services and is not using the Domain Name for any legitimate noncommercial or fair use.
5.4 More substantively it contends that the Respondent is using the Domain Name in order to divert Internet traffic to a website that competes with the Complainant and this is said not to provide rights or legitimate interests (citing MB Financial Bank NA v. LaPorte Holdings Inc., NAF Claim No. 362110 and Disney Enterprises Inc. v. Dot Stop, NAF Claim No. 145227).
5.5 So far as bad faith registration and use are concerned, the Complainant repeats its diversion of traffic allegation. It claims that by means of the Domain Name the Respondent is engaged in an “unauthorised and unapproved hijacking of customers” for commercial gain. Various cases are cited to support the proposition that this is bad faith registration and use. The Complainant also contends that even if it is only the “pay-per-click” service operator (in this case GoDaddy Inc.) who derives commercial gain from this activity, this activity still falls within the scope of paragraph 4(b)(iv) of the Policy (citing Ideal Products LLC v. Manila Industries Inc. NAF Claim No. 819490).
5.6 The Complainant also contends that this is a case of typosquatting and this of itself indicates bad faith.
5.7 Finally, reference is made to the Sociedad Rectora case, supra, which the Complainant claims provides evidence of a pattern of behaviour of bad faith registration and use by the Respondent. B. Respondent
5.8 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the most sensible reading of the Domain Name is as the words “first” and “quote” in combination together with the “.net” TLD. It also accepts that the Complainant has registered trade mark rights (and possibly common law unregistered trade mark rights in the United States) in the term “1stquote”.
6.5 The Panel further agrees that the terms “firstquote” and “1stquote” are phonetically identical. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is identical to a trade mark in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 The Panel accepts that the Domain Name was registered by the Respondent for use with a “domain name parking” or “pay-per-click” service with a view to generating “pay-per-click” revenue'. It is possible for use of a domain name for such a purpose to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a third party complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.7 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainant's mark in mind and has he then deliberately used the Domain Name to take unfair advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use, and a separate assessment of the question of rights and legitimate interests adds very little.
6.8 For the reasons that are explained in greater detail under the heading of bad faith, the Panel has reached the conclusion that in this case on the balance of probabilities the answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interests in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 It is clear that the Domain Name is currently, and has in the recent past been, used for a “pay-per-click” or “domain name parking” service.
6.10 It is now well-known how these sorts of service operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,WIPO Case No. D2007-1143).
6.11 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.12 The Panel also agrees with the Complainant that even if the registrant does not actually receive any part of the generated click through revenue, there can still be bad faith registration and use. It is not necessary to show under paragraph 4(b)(iv) of the Policy that the registrant intended that it is the one that would commercially gain by reason of the registration. It is sufficient to show that it was intended that someone would commercially gain (see, for example, V&S Vin&Sprit AB v. Corinne Ducos,WIPO Case No. D2003-0301).
6.13 There is a slight complication here in that the Complainant only provides evidence of what the website operating from the Domain Name looked like in late August 2009. The Domain Name was registered over six years prior to that date. Essentially, the Complainant is inviting the Panel to infer from current and recent activity that it was with this or similar activity in mind that the Domain Name was registered. This is not ideal. However, in the absence of evidence or arguments from the Respondent to the contrary, the Panel is prepared in this particular case to draw that inference. The Panel accepts that the present use reflects not only the Respondent's present intentions but his intentions at the time of registration2.
6.14 So what were (and remain) the Respondent's motives and intentions in registering the Domain Name for pay-per-click purposes? The Domain Name comprises two ordinary English words i.e. “first” and “quote”. The word “quote” is one that is frequently used in the field of financial services and in particular in the area of insurance. It is quite common for someone to refer to the fact that he is seeking or has obtained an “insurance quote”. The Domain Name is, of course, not the word “quote” alone, but the words “first” and “quote” together. The phrase “first quote” is not an immediately obvious combination of words, but neither is it a particularly unusual or striking combination. The phrase “first quote” is one that could be used in an ordinary sentence in an ordinary conversation without the need for much linguistic ingenuity or linguistic gymnastics.
6.15 In short, the Domain Name comprises a combination of words that calls for some explanation but it is not so unusual that it immediately and inherently leads to the inference that the Domain Name must have been registered with the Complainant's activities and mark in mind.
6.16 The Complainant also makes certain claims as to the reputation of its 1STQUOTE mark. Frequently, the degree of fame of a mark is highly relevant to a bad faith analysis. The greater the extent of the reputation, the more likely that the registrant was aware of the mark at the time of registration and the easier it becomes for a panel to infer the necessary knowledge and intent. However, the Complainant's evidence is far from compelling. The Complainant brings forward evidence of the extent of its recent activities in the United States, but nothing suggest that it is well known in the Netherlands where the Respondent appears to be based, let alone well known at the time that the Domain Name was registered.
6.17 Further, the nature of links that appear on the pay-per-click landing page do not particularly assist in this analysis either one way or another. There may be occasions where the links that appear on a pay-per-click page can only sensibly be explained by reference to the trade mark meaning or associations of any term, and this in turn influence the panel's findings on the questions of knowledge and intent (see comments at paragraph 6.15 of Owens Corning v. NA, supra). However, although the Panel accepts that many of the links that have appeared on the page operating from the Domain Name relate to the field of insurance and include links to the Complainant's competitors, this is not inherently suspicious given the obvious connection between the word “quote” and this business area.
6.18 Further, the Panel does not believe that the Complainant's claims of typosquatting are particularly helpful. This is not a case where the domain name can only be sensibly understood as a misspelling or transliteration of another's mark. It may well be, but it is not necessarily so.
6.19 Nevertheless, ultimately the Panel concludes that the Complainant has made out its case in this regard. As has already been explained the choice of “firstquote” calls for an explanation. If the Respondent had, for example, claimed and shown that this was simply one of a number of connected words or phrases that he had registered with potentially generic meanings, then that might well have been persuasive. But no such explanation or evidence was forthcoming.
6.20 There is also the Sociedad Rectora case identified by the Complainant. The issue here is not that so much this evidences a significant pattern of abusive registrations. It is merely one other finding of abuse registration over eight years ago. Nevertheless, the specific facts of that decision are instructive as there are some parallels with the present case. The domain name was , and the panel found that this had been abusively registered by reference to a number of BOLSA DE BILBAO trade marks. “Bolsa de Bilbao” was, and remains, the name of the Bilbao stock exchange. In short, the Respondent had abusively registered a term in the financial services sector in respect of a business engaged in another country than his own.
6.21 Next, there is the curious timing of the Domain Name registration, i.e. only 5 days after the Complainant asserts that it started using the term in commerce. It is a coincidence that calls for an explanation.
6.22 These three factors when combined together are sufficient to tip the scales in the Complainant's favour on the balance of probabilities. In the absence of any denial or explanation on the part of the Respondent, it is sufficient for the Complainant's allegations of bad faith registration and use to succeed. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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 be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: October 16, 2009
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