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Admiral Insurance Services Limited v. Mr. AdamDicker [2005] GENDND 677 (4 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Admiral Insurance Services Limited v. Mr. Adam Dicker

Case No. D2005-0241

1. The Parties

The Complainant is Admiral Insurance Services Limited, Cardiff, United Kingdom of Great Britain and Northern Ireland, represented by Hammonds, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mr. Adam Dicker, Richmond Hill, Ontario, Canada, represented by Dr. John B. Berryhill, United States of America.

2. The Domain Name and Registrar

The disputed domain name <elephant.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2005. On March 4, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name(s) at issue. On March 8, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on March 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2005. The Response was filed with the Center on March 30, 2005.

The Center appointed Alan L. Limbury, David H. Tatham and David E. Sorkin as panelists in this matter on May 17, 2005. 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.

The Complainant filed an unsolicited supplementary submission on May 5, 2005, and the Respondent filed an unsolicited supplementary reply on May 17, 2005. The Rules, paragraph 12 provide that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802.

The Panel considers that, despite the lateness of the unsolicited submissions, this is a case of discovery by the Complainant of evidence not available to it at the time of its initial submission and of arguments raised by the Respondent that the Complainant could not reasonably have anticipated: See Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. Accordingly the Panel admits the Complainant’s unsolicited submission and, in fairness, the Respondent’s unsolicited reply thereto.

On May 31, 2005, the Panel extended until June 4, 2005, the time for its decision to be delivered to the Center.

4. Factual Background

The Complainant is a well-known United Kingdom insurance intermediary which derives about 40% of its multi-million pound revenue from online sales of insurance under the “elephant” brand through its website “www.elephant.co.uk”. On July 2, 1999, it obtained registration, based on an application filed on January 12, 1999, for the word ELEPHANT as a trade mark in the U.K. (No.2186124) for motor and non-marine general insurance services in Class 36. It subsequently obtained two other U.K. registrations for that mark (Nos. 2248570A and 2248570B) and made application for registration in Europe (No. 4073201). It has used the trade mark on the Internet since 2000, and has promoted it in the United Kingdom.

The disputed domain name <elephant.com> was previously held by a Mr. Bradford Oberwager. On February 12, 2004, the Respondent offered to buy it from him for $15,000. By February 14, 2004, he and Mr. Oberwager had agreed the price of $22,500 and over the next few days they made arrangements for the transfer of the money and the transfer of the domain name.

On February 20, 2004, having become aware from a web page to which the domain name led that Mr. Oberwager was offering the disputed domain name for sale for $20,000, the Complainant offered him $18,000 for it. Mr. Oberwager declined, saying he had accepted an offer higher than his asking price and suggesting that if the Complainant were to pay him $32,000, Mr. Oberwager might be able to offer some money to the buyer to “walk away”. The Complainant agreed.

On February 21, 2004, Mr. Oberwager asked the Respondent whether he would be willing to accept $2,500 to let Mr. Oberwager out of the contract. The Respondent declined. By February 24, 2004, the name had been transferred to the Respondent.

On February 27, 2004, Mr. Oberwager reported to the Complainant that he had been unable to convince the buyer to sell the name back to him at a quick profit. He supplied to the Complainant the name and email address of the Respondent.

On February 28, 2004, a Mr. Stuart Clarke sent to the Respondent an email saying he had been given the Respondent’s contact details by Mr. Oberwager and that he was interested in purchasing the domain name at a suitable price. The email concluded with a pro forma statement that it was sent for and on behalf of Admiral Insurance Services Limited. Following a reminder from Mr. Clarke, the Respondent replied on March 5, 2004, that the domain name was not for sale.

Nine months later, on November 29, 2004, Mr. Clarke sent to the Respondent another email, again over the name Admiral Insurance Services Limited, saying: “It has come to my notice that you are the owner of the domain name elephant.com. I would be interested to speak with you with a view to purchasing the domain name…” The Respondent replied: “The domain is not for sale for less than 1 million dollars. 3 offers are currently pending”.

5. Parties’ Contentions

A. Complainant

The domain name is identical to the Complainant’s trade marks.

The Respondent has no rights or legitimate interests in respect of the domain name. He has been given no right by the Complainant to use it and the Complainant has no evidence of its use, prior to notice of this dispute, in connection with a bona fide offering of goods or services. The domain name currently directs Internet users to a website with links to websites operated by the Complainant’s competitors in the U.K. The specific links appear to change every time the website is accessed and occasionally include a link to the Complainant’s websites at “www.elephant.co.uk” and “www.admiral.com”.

The domain name was registered and is being used in bad faith. The acquisition from Mr. Oberwager constitutes registration for the purposes of the Policy. The Respondent would have been aware of the discussions between Mr. Oberwager and the Complainant to purchase the domain name and its value to the Complainant. The fact that the Respondent obtained the domain name when the Complainant was in the middle of negotiations to purchase it suggests that he acquired it primarily to sell it to the Complainant. His responses to Mr. Clarke’s emails and the use of the domain name as a portal to a site competing with the Complainant further indicate this. The amount of $1,000,000 was far in excess of any out-of-pocket costs.

Although the Complainant does not believe the Respondent is himself a competitor, the domain name was acquired primarily for the purpose of disrupting the Complainant’s business in the U.K. even though the Respondent is in Canada. By using the domain name to redirect users to insurance websites operated by the Complainant’s competitors, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location.

The website “www.highimpactsites.com”, also owned by the Respondent, has a “portfolio” section with a hyperlink to “www.elephant.com” and a description which refers to information about elephants. However, it links to the web site which lists insurance sites.

It should be inferred that the Respondent knew of the Complainant in the U.K. because (i) the Respondent “parked” the domain name on to a site which gave entry to a site advertising competitors of the Complainant; (ii) the Complainant’s “elephant” brand and “elephant.co.uk” website are well known outside the U.K.; and (iii) although the Respondent is based in Canada, all the links on his “elephant.com” website are to insurance companies in the U.K.

The Respondent is a sophisticated Internet professional who would be fully aware of how to link the domain name to the website listing competitors of the Complainant. He has a large number of domain names and has previously engaged in the same type of conduct.

The Complainant seeks transfer to it of the domain name.

B. Respondent

The domain name was registered in 1996, prior to the Complainant’s first use of its mark. Panels have differed as to whether the clear priority issue present here is to be considered under “Identity or Confusing Similarity” or under “Bad Faith”.

The domain name elephant.com corresponds to a common word. Hence this is not a case of “inconceivable legitimate use” by another.

The full correspondence between the Respondent and Mr. Oberwager shows that Mr. Oberwager did not mention the Complainant.

The Respondent is a professional web developer who maintains a large number of websites and domain names for present and future use by himself and his clients. This is not an illegitimate activity.

The Response includes a declaration from the Respondent stating that he is the Principal Officer of High Impact Sites Inc. and the registrant of the disputed domain name; that he acquired the domain name for $22,500 because “elephant” is a common word with value in connection with its common meaning; that he thereafter established a web site providing content on the subject of elephants, with Google Adsense advertisements based upon that content, intended to generate revenue on the basis of related interests expressed by visitors to the web site; that in the fall of 2004, he decided to experiment with varied advertising content, such as jewelry, photography, pet supplies, music downloads and personals, to determine whether additional advertisements would improve revenue; that in October 2004, amongst many communications he received expressing interest in purchasing the domain name, he received one from Mr. Clarke, which he ignored since it made no mention of any legal claim nor any figure; that during a few weeks in December 2004 and January 2005, the domain name was associated with insurance advertisements as he had been rotating through varied subject matter in connection with the domain name; that until receiving the Complaint he had never heard of any company using the word “elephant” as a brand of insurance and that as soon as the Respondent was put on notice of the unintentional and brief infringement he immediately removed the insurance advertisements and restored the original content relating to elephants.

The Respondent submits that, despite the brief appearance of insurance-related links at a time when he was thoroughly unaware of the Complainant’s claim, there is no question that the domain name was used for a bona fide offering of goods and services prior to notification of this dispute.

As to bad faith, it is clear the Respondent did not know of the Complainant nor its claim to the mark when he acquired the domain name, nor did he know of them at any time prior to the Complaint. The brief appearance of insurance-related links is not probative of the Respondent’s intent in registering the domain name, which was subsequently used in connection with a topical web site pertaining to elephants.

The Respondent submits the Complaint has been maintained in bad faith to include reckless and false allegations unsupported by due enquiry and requests that the Complaint be denied.

6. Further submissions

A. Complainant

On May 5, 2005, it came to the Complainant’s attention that the homepage of the website at “www.elephant.com” now contains links to websites that provide insurance products. All of these sites are operated by UK insurance companies and are competitors of the Complainant. This is relevant in relation to whether the domain name is being used in bad faith.

The use of these links refutes the claim by the Respondent that the previous links to insurance sites were innocent. It also contradicts (and shows bad faith) in the statements set out in the Response that there was a “brief association with insurance links” and that “appropriate corrective action” was taken as soon as the Respondent was put on notice of the “unintentional and brief infringement”.

B. Respondent

The Respondent’s web site is directed to the subject matter of elephants. A panel displays what are known as Google “Adsense” advertisements, which are purchased by Google advertising customers to be displayed in response to key words appearing in the context of the webpage into which they are incorporated. Their selection is entirely generated by Google, not the operator of the website, who is forbidden by the terms for using Google Adsense advertisements from interfering with Google’s selection.

The advertising selection algorithm employed by Google takes into account the originating IP address of the person viewing the web page. Users in different geographic regions see entirely different advertisements, over which the Respondent has no control. This “geo-targeting” is explained by Google thus:

“The AdSense program uses geotargeting to serve Google ads to your pages - ads are specific to a user’s region and language, based on their IP address. This means that the ads that are served to a user from Australia may be different than those that appear for a user from Canada….”

It is thus not possible for the Respondent to be causing insurance ads to be displayed on the web page to users in the UK and it is incorrect to say that the Respondent is intentionally selecting the advertisments displayed at the website. The Respondent, in Canada, has been utterly unaware of what advertisements are shown in the UK.

The Google Adsense ads are not relevant to the Respondent’s intent under the Policy and do not show bad faith registration or use of the domain name.

The Complainant has shown that advertisers are using the Google Adsense program to display insurance advertisements in connection with the word “elephant”, which are only visible in the UK. That is a matter between the Complainant, Google, and those advertisers. The Respondent has no duty to police the use of trademark in advertisements which the Respondent cannot see and of which he is not aware.

7. Discussion and Findings

Paragraph 15(a) of the Rules requires the 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.

Under paragraph 4(a) of the Policy, a Complainant bears the burden of showing:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used by the Respondent in bad faith.

A. Rights in a mark

The differences between Panels on the “priority” issue raised by the Respondent have recently been resolved in favour of the view that paragraph 4(a)(i) does not require the Complainant’s trademark rights to have arisen before the disputed domain name was registered. Rather, this factor is relevant for the purposes of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy: Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038.

Here, although the domain name was registered some years before the Complainant’s first use of the ELEPHANT mark, the transfer of the domain name from Mr. Oberwager to the Respondent constituted the relevant act of registration for the purposes of this case, since the term “registration” extends beyond the original act of registration and covers subsequent acquisitions of the domain name: See Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406 and the cases there cited.

The Complainant has demonstrated that it has rights in the registered trade mark ELEPHANT in the U.K.

B. Identical or Confusingly Similar

The Panel finds the domain name <elephant.com> to be identical to the Complainant’s registered mark ELEPHANT, many cases having found the “.com” suffix to be inconsequential.

C. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use its ELEPHANT mark. This establishes the Complainant’s prima facie case on this issue and the burden therefore shifts to the Respondent to provide evidence of its right or legitimate interests under paragraph 4(c): Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. The Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”

Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Case AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., NAF Case No. FA00030000094375) and Royal Bank of Canada v. Xross, eResolution Case No.AF-0133.

The generic character of the mark and the Canadian base of the Respondent afford no ground for a finding that the Respondent was aware of the Complainant’s mark when he acquired the domain name. Nor has the Complainant shown that its mark was promoted in Canada. The Complainant’s assertion that the Respondent acquired the domain name when the Complainant was in the middle of negotiations to purchase it is incorrect since the Complainant’s first contact with Mr. Oberwager took place after the sale to the Respondent had been agreed. In suggesting a buy-back to the Respondent, Mr. Oberwager made no mention of the Complainant.

For these reasons, the Panel finds that the Respondent was unaware of the Complainant and of its rights in the ELEPHANT mark when he acquired the domain name from Mr. Oberwager.

The Complainant’s communications with the Respondent prior to the Complaint made no mention of nor made any claim in relation to the ELEPHANT mark. The Panel finds that the Respondent became aware of the Complainant’s corporate name on February 28, 2004, but that he did not become aware of the ELEPHANT mark until the Complaint was filed.

Before he became aware of the Complainant’s mark, the Respondent used the domain name in relation to the provision of information about elephants, coupled with advertising unrelated to the Complainant’s business, designed to generate revenue. Subsequently but still prior to his becoming aware of the Complainant’s mark, some of the advertisements displayed on the Respondent’s website were for insurance offered by U.K. companies, being competitors of the Complainant. There have been similar insurance advertisements on the website following the filing of the Complaint.

The Panel considers that the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy. It is unnecessary to decide whether this is so irrespective of whether a respondent knows of a complainant’s mark prior to acquiring the domain name because here the Panel has found the Respondent had no such knowledge.

In the absence of such knowledge, the additional factor of the display of advertisements, including insurance advertisements, does not change the legitimate character of the Respondent’s activity.

It is unnecessary to decide whether any intentional display by the Respondent of insurance advertisements on his website after becoming aware of the Complainant’s mark could render illegitimate that which was previously legitimate because the Panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them and that the Respondent cannot be aware of their content as displayed in any particular country.

In Experimental Aircraft Association (EAA) v. EAA.COM, NAF Case No. FA0310000206309, the Panel found that the brief appearance of aviation links on the respondent’s web sites was automatically provided by a pay-per-click search engine provider and was not intended by the respondent. Since there was no evidence that the respondent’s business was in connection with aviation, the respondent had no duty to be aware of the complainant’s mark. Those findings are applicable here.

For these reasons the Panel finds that the Complainant has not established the absence of rights or legitimate interests in respect of the domain name on the part of the Respondent.

D. Registered and Used in Bad Faith

The Panel’s finding that the Respondent was unaware of the Complainant or its mark when he acquired the domain name is fatal to any finding of bad faith under any of sub-paragraphs 4(b)(i)-(iii) of the Policy.

A finding of bad faith registration may nevertheless be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which a domain name was registered. Where, however, there is evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith. See Passion Group Inc. v.Usearch, Inc., eResolution Case No. AF-0250; Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, and Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085.

Accordingly, even if the Panel were to find that in May 2005, the display of insurance advertisements on the Respondent’s website after knowledge of the Complainant’s mark constituted bad faith use within paragraph 4(b)(iv), that would not displace the Panel’s finding that the domain name was not registered in bad faith in February 2004.

In light of the Panel’s findings, the Respondent’s sophistication as an Internet professional, his ownership of a large number of domain names and any previous similar conduct do not as such establish bad faith registration or use in this case.

The Panel finds that the Complainant has failed to establish this element of its case.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Alan L. Limbury
Presiding Panelist

David H. Tatham
Panelist

David E. Sorkin
Panelist

Dated: June 4, 2005