Complainant is PGA Service Corporation of Nashville, Tennessee, United States of America (“United States”), represented by Waller Lansden Dortch & Davis, LLP, United States.
Respondent is Online Ops, All Web Leads, Inc. of Austin, Texas, United States, represented by Pirkey Barber PLLC, United States. 2. The Domain Name and Registrar
The disputed domain name 1 is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2016. On November 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on December 5, 2016.
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 Respondent of the Complaint, and the proceedings commenced on December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. On December 19, 2016, Respondent filed a request for an additional 20 calendar days to file the Response. The Center granted the requested extension of time, and confirmed that the new deadline for Response was January 17, 2017. The Response was filed with the Center on January 16, 2017.
The Center appointed Lawrence K. Nodine, W. Scott Blackmer and The Hon Neil Brown Q.C. as panelists in this matter on February 7, 2017. 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
Complainant is an automobile insurance agency with offices in seven states across the United States. Complainant is the owner of several trademark registrations incorporating the phrase “the general” combined with design elements (in particular, a cartoon of a military general) dating back to 1996. On February 27, 1996, Complainant was issued its first trademark registration for THE GENERAL (plus design) for use in underwriting automobile insurance and in insurance agency and insurance brokerage services in the fields of automobile insurance. Complainant also asserts that it has acquired common law rights in the phrase “the general,” pointing to a wide variety of domain names it owns that incorporate that phrase. The mark has been in commercial use since 1993.
Respondent operates a referral service for consumers of automobile insurance. Respondent registered the disputed domain name on December 10, 2007, and has been using the disputed domain name in connection with its auto insurance referral service for over six years. The disputed domain name was scheduled to expire on December 12, 2016. 5. Parties’ Contention A. Complainant
Complainant asserts that it has obtained the exclusive right to use THE GENERAL mark and other related marks through its years of use of these marks in commerce and through its ownership of the trademark registrations for these marks. Complainant also asserts that at the time Respondent registered the disputed domain name Complainant had been using THE GENERAL mark in commerce with its offering of insurance services for over thirteen years and had been using the mark on its website for over five years.
Complainant argues that the disputed domain name is confusingly similar as it incorporates an essential part of Complainant’s mark. According to Complainant, the addition of “auto insurance” to the disputed domain name does not serve as a distinguishing feature as it is merely a descriptive term.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Complainant acknowledges that
Respondent can show it is actually offering the services at issue because All Web Leads offers automobile insurance quote services. This is a similar service, as offered by Complainant… Respondent advertises for sale more than the trademarked services on its website. While Complainant offers free automobile insurance quotes, Complainant also sells automobile insurance. Respondent, however, does not also sell automobile insurance. Complaint paragraph 33.
Nonetheless, Complaint argues that Respondent has no legitimate interest in the disputed domain name for several reasons. First, Complainant asserts that Respondent’s use of the mark is unauthorized and that Complainant’s registration of the mark pre-dates Respondent’s use of the disputed domain name. Second, Complainant argues that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services under the four-factored analysis in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and that Respondent uses the disputed domain name to lure Internet traffic to its website and away from Complainant’s site. Lastly, Complainant argues that Respondent is not commonly known by the disputed domain name and that Respondent is making an illegitimate and a commercial use of the disputed domain name.
Complainant alleges that Respondent’s registration and use of the disputed domain was in bad faith because it chose to register a domain name that is “virtually identical” to Complainant’s mark and is using the disputed domain name to trade on Complainant’s rights and divert Internet traffic to Respondent’s website, which offers services that compete with Complainant’s and which duplicates the “look and feel” of Complainant’s brand and various trademarks in an effort to bait customers in an effort to bait customers. B. Respondent
Respondent contends that although both Complainant’s mark and Respondent’s domain name incorporate the word “general,” the word has a different meaning as used by Complainant then as used by Respondent. According to Respondent, the inclusion of the article “the” imparts a very different meaning to the word “general” as used in Complainant’s mark. That is, “general,” as used in Complainant’s mark, refers to a military officer, a reference that is strengthened through Complainant’s use of the article “the” and of the “persuasive imagery of a man in a decorated military uniform with five stars on his helmet.” Respondent argues that rather than using “the general” as a noun, Respondent uses “general” as an adjective to convey the “broad, vague and non-descript offering.” Additionally, Respondent states that “general insurance” is a term of art in the insurance field that refers to “any insurance that is not life insurance.”
With regard to its rights and interests in the disputed domain name, Respondent alleges that it uses the name “General Auto Insurance” on its website to offer referral services for general insurance for automobiles. According to Respondent, any confusion resulting from the use of “General Auto Insurance” is a consequence of Complainant’s own choice of the mark THE GENERAL in connection with general insurance services. Respondent also argues that the Oki Data analysis does not apply here as it pertains to the use of a company’s mark by the resellers and distributors associated with that company.
Lastly, Respondent argues that Complainant has failed to provide evidence of bad faith registration. Respondent also argues against Complainant’s contention that Respondent has copied the look and feel of Complainant’s brand and trademarks by outlining the differences in the features of its website in comparison. Additionally, Respondent contends that Complainant’s unexplained nine-year delay in challenging Respondent’s use of the disputed domain name negates Complainant’s assertion of bad faith use and its assertion that Respondent lacks rights and legitimate interests in the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
Because the Panel finds that Complainant failed to satisfy paragraphs 4(a)(ii) or 4(a)(iii) of the Policy, it will assume that Complainant satisfies paragraph 4(a)(i) of the Policy. Although the highly descriptive, if not generic, meaning of “general auto insurance,” and the absence of the article “the” raise serious concerns, the Panel will assume that Complainant’s mark is sufficiently recognizable to confer standing to pursue this challenge and decide the case based on the other factors. B. Rights or Legitimate Interests
Complainant has not satisfied paragraph 4(a)(ii) of the Policy. On the contrary, Complainant has conceded that in fact Respondent has for several years operated its site to refer users to legitimate insurance providers. Complainant seems to attach some significance to the fact that Respondent does not also sell insurance, but this fact is not relevant. In fact, Respondent has a bona fide business. C. Registered and Used in Bad Faith
The Panel finds that Complainant has failed to show that the disputed domain name was registered and is being used in bad faith. Here, Complainant contends that Respondent’s actions satisfy paragraph 4(b)(iv) of the Policy. Specifically, Complainant argues that Respondent has used the disputed domain name in an intentional attempt to attract Internet users to Respondent’s website by creating a likelihood of customer confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
First, considering that there is evidence to show that the term “general insurance” is a highly descriptive term in the insurance industry, the Panel is not persuaded that Respondent’s choice of domain name evidences bad faith registration. Complainant has failed to prove by a preponderance of evidence that Respondent registered the disputed domain name in bad faith to exploit Complainant’s good will. The Panel finds it more plausible that Respondent sought to use the descriptive or generic connotations of the phrase in the insurance industry. In any event, Complainant has not offered sufficient evidence to dispel this plausible explanation.
Further, the Panel finds no evidence to show that Respondent has attempted to attract users to its website by creating an atmosphere likely to confuse customers as to its affiliation with Complainant. While the disputed domain name has the word “general” in common with Complainant’s mark, the disputed domain name as a whole, at least arguably, is a generic expression referring to all types of automobile insurance. For the past six years, Respondent has used the disputed domain name to offer services in the automobile insurance field.
Moreover, contrary to Complainant’s contention, Respondent’s website does not duplicate the look and feel of Complainant’s brand or trademarks. For example, Respondent’s depiction of a red car on its website is markedly different from Complainant’s use of a red car. Complainant features a side view of “The General” character driving a red convertible. Respondent’s red car is not a convertible and is depicted head-on and without a driver — “The General” himself is conspicuously absent. Similarly, the appearance and display of Respondent’s “General Auto Insurance” logo on the website is distinct from the manner in which Complainant’s “The General” logo appears and is displayed on Complainant’s website. In short, there is no imagery on Respondent’s website that invokes an affiliation with The General brand of insurance. Thus, there is no evidence to show that Respondent registered and is using the disputed domain name in an attempt to attract users to its website for commercial gain by creating a likelihood that users would consider the services provided on its website as those endorsed by or affiliated with Complainant.
The Panel also rejects the contention that Respondent’s alleged purchase of keywords is evidence of bad faith as Complainant offers no evidence that the resulting promotional advertising manifests a bad faith use of Complainant’s marks.
Lastly, the Panel finds that Complainant has offered no evidence to support a finding of bad faith use under the three other circumstances set forth in paragraph 4(b) of the Policy.
Accordingly, the Panel finds that Complainant has failed to carry its burden and satisfy paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Presiding Panelist
W. Scott Blackmer
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: February 21, 2017
1 See also PGA Service Corporation v. Online Ops, All Web Leads, Inc.,WIPO Case No. D2016-2356 ().
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