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Generic Top Level Domain Name (gTLD) Decisions |
Aon Reed Stenhouse Inc., Aon Canada Inc.
and Aon Corporation v. Robin Beasse
Claim Number: FA0202000104576
PARTIES
Complainants
are Aon Reed Stenhouse, Inc., Aon
Canada, Inc. and Aon Corporation, Vancouver, BC, CANADA
(“Complainants”) represented by Bradley
J. Freedman. Respondent is Robin Beasse, Moose Jaw, SK, CANADA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aonreedstenhouse.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainants
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on February 8, 2002; the Forum received
a hard copy of the
Complaint on February 12, 2002.
On
Febraury 11, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <aonreedstenhouse.com>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby
agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
February 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 4, 2002 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via
e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts,
and to postmaster@aonreedstenhouse.com by e-mail.
A
late Response was received on March 6, 2002.
On March 11, 2002, pursuant to Complainants’ request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainants
request that the domain name be transferred from Respondent to Complainants.
PARTIES’ CONTENTIONS
A. Complainants made the following
allegations in this proceeding:
Complainants
have established rights in the mark that is contained within the disputed
domain name. Respondent registered a
domain name containing Complainants’ mark in its entirety. Respondent had no right to or interest in
the mark or the domain name that contains in its entirety the Complainants’
mark. The domain name is identical to
or, alternatively, confusingly similar to Complainants’ well-known mark. Respondent knew about Complainants’ business
and mark prior to registering the domain name in issue. Respondent registered
and used
the disputed domain name in bad faith.
B. Respondent made the following points in
his late-filed Response, which the Arbitrator accepted and considered:
Respondent
urges that he registered the domain name to use it as a forum for posting
complaints against Complainants and other insurance
related business
entities. Respondent attests that he
had no bad faith intent and offered in this proceeding to transfer the domain
name in issue to the Complainants
for a fair price. The Panel has no information that any such transfer has taken
place but a hold has been placed on the domain name. Respondent did
not address
the issues of confusing similarity or Respondent’s right or interest in the use
of Complainants’ mark.
FINDINGS
Complainants own the AON REED STENHOUSE trademark in
the United States and Canada. Aon Corporation
is the registered owner of the AON mark in Canada and the United States
and has authorized Aon Canada, Inc. and Aon Reed Stenhouse,
Inc. to use the AON
trademark in Canada. These entities
have used the mark in commerce in the United States since 1987 and in Canada
since 1956.
Aon Canada, Inc. is the registered owner of the REED
STENHOUSE trademark in Canada and has authorized Aon Reed Stenhouse, Inc. and
Aon Canada to use the REED STENHOUSE trademark in Canada since as early as
February 1978.
Aon Reed Stenhouse, Inc. is Canada’s
oldest insurance brokerage firm, employs more than 1,200 people in officers in
24 Canadian cities
and offers a wide variety of insurance brokerage and risk
management products and services.
The AON REED STENHOUSE mark is a
combination of two registered marks, AON and REED STENHOUSE, which are used in
combination with the
permission of the registered owners of the marks, Aon
Corporation and Aon Canada, Inc. It has come to be associated with distinct
business, products and services. Complainants have invested considerable time
and funds in developing the goodwill of their business
enterprises.
Complainant Aon Corporation is a Chicago
based insurance services holding company that owns a family of insurance
brokerage, consulting
and insurance underwriting companies. Aon Corporation has
a worldwide network of more than 550 offices in over 120 countries, and
employs
more than 40,000 people worldwide.
Complainant Aon Reed Stenhouse, Inc. is a leading Canadian insurance
brokerage and risk management firm and is Canada’s oldest insurance
brokerage
business and carries on its sole business in Canada.
Respondent registered the <aonreedstenhouse.com>
domain name on August 2, 2001. Respondent used the domain name for a Web site
that contains comments that are disparaging and critical
of the Complainants.
Complainants sent Respondent a cease and
desist letter and sought transfer of the domain name. Respondent refused to do so.
The proof permits the finding that
Respondent became disenchanted with Complainants after an attempt to handle an
insurance claim
with them. Respondent
acknowledges that the site “is an informational site containing factual
description of events that took place during the
handling of a claim with Aon
Reed Stenhouse.” Respondent contends
the site is “a Public forum in which people can post information about
insurance companies.” Respondent offered
no proof that anyone but Respondent
has ever used the site to post insurance related information.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain
name should be cancelled or
transferred:
(1)
the domain name registered by Respondent is identical or confusingly similar to
a trademark or service mark in which Complainants
have rights;
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Complainants assert rights in the AON REED STENHOUSE
mark based on usage in commerce since as early as 1978 for a portion of the
mark.
Furthermore, Complainant, Aon Canada Inc. is the registered owner of the
REED STENHOUSE trademark in Canada.
Complainants further assert that Respondent's <aonreedstenhouse.com> domain name is identical to Complainants’
AON REED STENHOUSE mark, and confusingly similar to Complainant's REED
STENHOUSE mark because
the domain name registered by Respondent incorporates
Complainants' marks in their entirety and adds the generic top-level domain
name ".com". The addition of
a top-level domain name is irrelevant when considering whether a mark is
identical or confusingly similar to another’s
mark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); see
also Surface Protection Indus., Inc.
v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name
confusingly similar “so as to likely confuse Internet users who may believe
they are doing business with Complainant or with an entity whose services are
endorsed by, sponsored by, or affiliated with Complainant;
hence, satisfying
the confusing similarity requirement”).
Respondent
asserts that even though the domain name is similar to Complainants’ mark no
confusion is possible because the website
is clearly being used as a site of
public comment about Complainant and other insurance companies. The Panel finds
this position
to be an admission by Respondent that the disputed domain name is
identical to and confusingly similar to Complainants’ marks.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to and Legitimate
Interests
Complainants
assert that Respondent has not used the disputed domain name for a bona fide
offering of services because the domain
name is identical to Complainant's mark
and therefore seeks to divert Complainant's customers to Respondent's
website. The use of Complainant's
trademark to divert Complainant's customers to Respondent's website is not
considered to be a bona fide offering
of goods and services pursuant to Policy
¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests
where Respondent diverted Complainant’s customers to
his websites).
Complainants
further assert that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii) and therefore
has no rights or legitimate
interests in the disputed domain name. See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark
and never applied for a license or permission from
Complainant to use the trademarked name).
Complainants
urge that Respondent's domain name has been used to criticize Complainant and
therefore to tarnish Complainants’ goodwill.
Furthermore, Complainants contend that even though Respondent has the
right to inform the public of its opinion of Complainants it
does not have the
right to do so using Complainants’ mark.
Therefore, Respondent is not using the disputed domain name for a
legitimate, noncommercial or fair use. See Robo Enter., Inc. v. Tobiason, FA 95857
(Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or
legitimate interest in the domain name <roboenterprises-investors.com>,
noting that while the content of Respondent’s web site may enjoy First
Amendment and fair use protection, those protections do not
equate to rights or
a legitimate interest “with respect to [a] domain name” which is confusingly
similar to another’s trademark);
see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000)
(finding that Respondent had no rights or legitimate interest in the domain
name even though Respondent
stated that it intended to use the domain name for
“public comment” on the Internet).
Respondent
asserted in this proceedings that he is using the disputed domain name for a
bona fide purpose of providing a site for
public comment about insurance
companies and not to benefit from a likelihood of confusion. Respondent asserts that no confusion is
possible once an Internet user visits the website and that Complainants and
other insurance
companies are welcome to post their information at the website.
The Panel recognizes that public forum sites are a welcome part of
the Internet
and have First Amendment protection. See
TMP Worldwide Inc. v. Potter,
D2000-0536 (WIPO Aug. 5, 2000) (finding
that a criticism forum is an exercise of first amendment rights and, therefore,
a legitimate noncommercial use for the domain
name). But Respondent seeks to speak about
Complainants under the guise of speaking in Complainants’ name and using
Complainants’ protected
mark. This not only prevents Complainants from
exercising such speech in their own name it prevents them from otherwise using
their
rightful mark in a public posting on the Internet. Respondent is
effectuating a fraud on the public under the feigned guise of free
speech.
Respondent
further notes in this proceeding that he is willing to transfer the domain name
to Complainants if they will compensate
Respondent for the costs incurred
registering the domain name with various search engines. Respondent seeks a
“fair price” but does
not specify what that price would be. Respondent assumes wrongfully in this
instance as well that he had a right to register a domain name using
Complainants’ well-known
mark.
Respondent has shown no such rights to or legitimate interest in the
mark in this proceeding.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainants assert that the domain name
registered by Respondent, <aonreedstenhouse.com>, is identical to Complainant's mark and that
the Internet user will likely believe that an affiliation exists between
Respondent and
Complainant when there is no such association between them. Registration and use of the <aonreedstenhouse.com>
domain name despite its being identical to Complainants’ well-known mark is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith
registration and use where it is “inconceivable that the respondent could
make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”).
The
Panel has considered Respondent’s assertions that he registered and used the
disputed domain name in good faith for the bona fide
purpose of using the
domain name for public comment. Cases recognize a party’s right to criticize
another using the Internet. See Societe des Produits Nestle S.A. v.
Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001) (finding that
where Respondent has not attempted to sell domain name for profit, has not
engaged
in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, is not a competitor
of
Complainant seeking to disrupt Complainant's business, and is not using the
domain name to divert Internet users for commercial
gain, lack of bona fide use
on its own is insufficient to establish bad faith). But Respondent’s conduct
does not meet the test imposed
there.
The Panel finds that it is appropriate to give greater weight to
Respondent’s objective manifestations than to his subjective attestations. Respondent admits to dissatisfaction with
Complainants after he attempted to handle a claim with them. Respondent knew before he registered the
domain name that Complainants had a prior right to use of the mark. Respondent nevertheless registered the
domain name using Complainant’s mark.
Respondent then sought to sell the domain name for a “fair price” that
was not specified to be his mere cost of registration and expenses
of development
of the website. No evidence was produced that Respondent transferred the domain
name. Respondent’s conduct on its
face sought to disrupt Complainants’ business
by negative commentary. The Panel finds that Respondent acted in bad faith.
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having satisfied all three of the policy
requirements necessary to obtain the requested relief, it is therefore Ordered
that the domain
name <aonreedstenhouse.com> be transferred
from Respondent to Complainants.
Hon. Carolyn Marks
Johnson, Panelist
Dated: March 22, 2002.
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