The Complainant is Markel Aspen, Inc. of Wilmington, Delaware, United States of America (“United States”), represented by Hinckley, Allen & Snyder, LLP, United States.
The Respondent is Whois Privacy Services Pty. Ltd. / Vertical Axis Inc., Domain Administrator of Fortitude Valley, Queensland, Australia, and Worthing, Barbados, represented by ESQ Law Firm, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2012. On March 23, 2012, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On March 26, 2012, F 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 March 26, 2012 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 March 30, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response April 22, 2012. The Response was filed with the Center April 22, 2012. A Supplemental Filing was received by the Center from the Complainant on April 25, 2012. A Supplemental Filing was received by the Center from the Respondent on April 30, 2012.
The Center appointed Michael J. Spence, Michael A. Albert and The Hon Neil Brown Q.C. as panelists in this matter on May 8, 2012. The Panel finds that it was properly constituted. Each member of 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
The Complainant provides products and services in the field of workers’ compensation insurance through a network of more than 8,000 independent insurance agencies. One in 450 workers in the United States is insured with the Complainant, has been operating its business under the trade mark FIRSTCOMP since 1997. The trade mark FIRSTCOMP was registered with the USPTO on September 8, 2009. In addition, Complainant registered the domain names and on May 27, 1999 and March 25, 2009 respectively. The Respondent operates a web site under the disputed domain name on which pay-per-click advertising links are displayed and which contains an offer to sell the disputed domain name. The advertising links contained on the web site are automatically generated by software operated by Y. They have included, but are not restricted to, links to sites offering products and services in competition with those of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that both the use of a confusingly similar domain name to sell competing products and the offering for sale of the disputed domain name constitute bad faith. B. Respondent
The Respondent argues that the Complaint should be dismissed on the grounds of laches; that the disputed domain name is not confusingly similar, consisting as it does in an abbreviation of a common word and a common word combined in reverse order to that in which they occur in the Complainant’s trade mark; that the Complainant itself relied upon the claim that the disputed domain name is different to its trade mark in registering that trade mark with the USPTO; that the third party use of the words constituting the disputed domain name suggests that the two are not confusingly similar; that the Respondent has been operating under the disputed domain name for at least four years for the bona fide business of offering pay-per-click advertising links; that the offering for sale of a domain name can also constitute a bona fide offering of goods or services; and that it has not been guilty of bad faith in either registering or continuing to use the disputed domain name. The Respondent also claims that the Complainant has been guilty of reverse domain name hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
Cases in which a trade mark consists of one or more descriptive terms such as “comp” as an abbreviation for “compensation” and “first” are among those in which it can be most difficult for a Complainant to establish that a disputed domain name is identical or confusingly similar to its mark. In this case, the fact that the Complainant itself asserted a distinction between the trade mark FIRSTCOMP and a senior registration of the mark COMPFIRST in proceedings before the USPTO further weakens its case, as does the third party use which the Respondent has been able to demonstrate. This must be somewhat offset by the extent of the Complainant’s use of its mark and the resulting strength of its reputation. However, there is insufficient evidence on the file to suggest that the Complainant’s reputation in its trade mark is sufficiently strong to give rise to confusion between that combination of essentially descriptive terms and the disputed domain name.
There is also, however, insufficient evidence on the file to suggest the type of bad faith that is required for a finding of reverse domain name hijacking. In particular, Complainant’s prior contrary position before the USPTO is not necessarily evidence of bad faith. For example, Complainant could have believed that its FIRSTCOMP mark had acquired distinctiveness but that the disputed domain name had not. Because Complainant could have plausibly believed that confusion was unlikely as between its mark and a senior registration, but likely as between its mark and Respondent’s, there is insufficient evidence to support a finding of reverse domain name hijacking.
For this reason the Panel finds that the Complainant has failed to establish the first element of paragraph 4(a) of the UDRP Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain names (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). This burden is more difficult to discharge in this case than in some others because of the nature of the Complainant’s trade mark, consisting in a common abbreviation and a common word. Moreover, whether or not the Complainant’s delay constitutes laches, the Respondent has been using the disputed domain name for at least four years before the commencement of these proceedings, and the disputed domain name was before that being used by a different proprietor. The burden on the Complainant of establishing that the Respondent has no rights or legitimate interests in the disputed domain name must therefore be even greater than it would otherwise be.
The Complainant contends that its trade mark does not consist of a common word, and that the term “comp” is itself not a common or descriptive word. It further contends that the offering of pay-per-click advertising cannot constitute a “bona fide offering of goods or services or a legitimate non-commercial or fair use.” Finally, it contends that offering the disputed domain name for sale cannot constitute a bona fide offering.
The Respondent contends that it did not register this combination of common words as a domain name “with a trademark in mind” and, relying upon Panel decisions such as Dial-A-Mattress Operating Corp. v. Ultimate Search,WIPO Case No. D2001-0764, that a pay-per-click advertising business can indeed give rise to rights or legitimate interests in a disputed domain name. The Respondent also contends that its pay-per-click advertising business is not specifically directed at customers seeking workers’ compensation insurance and, in that its site offers such goods and services, it does so only as a result of the automatic generation of advertising links because of the common meaning of the abbreviation “comp”. Finally, the Respondent relies upon Panel decisions such as X6D Limited v. Telepathy, Inc.,WIPO Case No. D2010-1519 to argue that offering a domain name for sale can constitute a use giving rise to a right or legitimate interest “provided there is no evidence a trademark was targeted by the registrant.”
Given the finding of the Panel on the application of the first element of Paragraph 4(a) of the UDRP, it is not strictly necessary to consider this second element. However, for completeness, the Panel notes that the arguments of the Complainant and Respondent in this case are finely balanced and must, to some extent, depend upon questions of fact that are disputed between the parties. These are questions of fact the administrative Panel process is not well suited to investigate. Given that uncertainty, the Panel believes that the Complainant has not, on balance, discharged its burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name.
For this reason the Panel finds that the Complainant has not established the second element of paragraph 4(a) of the UDRP Policy. C. Registered and Used in Bad Faith
Given its finding in relation to the first and second elements of paragraph 4(a) of the UDRP Policy, it is not necessary to consider the third. However a finding of bad faith would be difficult in this case for much the same reasons that the Panel has found against the Complainant on the first and second elements of paragraph 4(a).
For this reason the Panel finds that the Complainant has not established the third element of paragraph 4(a) of the UDRP Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Presiding Panelist
Michael A. Albert
Panelist
The Hon Neil Brown Q.C.
Panelist
Dated: May 17, 2012
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