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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd , Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd
Purge I.T., Purge I.T. Ltd
Case No. D 2000-0583
1. The Parties
(1) Direct Line Group Ltd
(2) Direct Line Insurance plc
(3) Direct Line Financial Services Ltd
(4) Direct Line Life Insurance Company Ltd
(5) Direct Line Unit Trusts Ltd
(6) Direct Line Group Services Ltd
All of 3, Edridge Road, Croydon, Surrey CR9 1AG, United Kingdom.
(1) Purge I.T. of Park Farm Cottage, St Giles Close, Wendlebury, Oxon OX6 7AA, U.K.
(2) Purge I.T. Ltd of Unit D3a, Telford Road, Bicester, Oxford OX6 0TZ, U.K.
The Domain Name and Registrar:
DIRECTLINESUCKS.COM, registered by Network Solutions, Inc. on May 11, 1999, to the Registrant: Purge I.T. (Directlinesucks-dom); (Contacts:OzNic.com -- Administrative: (AMD598-ORG), Technical and Zone: (ITT-ORG), Billing: (ITA3-ORG))
2. Procedural History
(1) The Complaint in Case D 2000-0583 was filed on June 12, 2000.
(2) The WIPO Arbitration and Mediation Center has found that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
The Panel accepts these findings and itself finds that:
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondents and the Contacts abovenamed by Post/Courier, Fax and E-mail.
- A Response to the Complaint was filed in due time, though a copy was not sent by the Respondents to the Complainants; as required by Rule 2(h) of the Dispute Resolution Policy.
- the Administrative Panel was properly constituted.
(3) The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There has been a further submission from the Complainants consisting of comments on the Response. Due to the failure of the Respondents to send the response to the Complainants, the Panel decided that it must in the circumstances be admitted. In order to avoid any consequent prejudice to the Respondents, the Panel in turn permitted the Respondents until August 6, 2000, to offer their own comments. None have been received.
(5) The date originally scheduled for issuance of a decision was: August 8, 2000. In light of the circumstances mentioned in the previous paragraph, the Panel ordered that this be changed to August 13, 2000.
(6) The language of the proceedings is English.
3. Factual Background
(1) The Complainants are a group of United Kingdom companies of which the first-named is the parent. Between them they do considerable business in that country in insurance, mortgages and other loans, life assurance, savings accounts and other financial services, the sixth Complainant providing various service and contracting functions to the others. The Complaint has furnished detailed evidence of the considerable amounts of business undertaken by the second to the fifth Complainants, all of which employ the mark, "Direct Line", for their services and products.
On behalf of the Direct Line group, the second Complainant is proprietor of 20 registrations of trade marks in the United Kingdom, consisting of or incorporating as a major feature the words, "Direct Line". The registrations are held for various insurance and other financial services and also for considerable categories of goods and all date from before registration of the Domain Name in dispute.
(2) The Complainants also hold 52 TLDs which incorporate "directline" or "directlines". Many of these add a further word without any break, as in "directlineinsurance.com", "directlineclub.com".
(3) The Complaint forms one of a series against the Respondents or the corporate Respondent alone. The Response to these cases has been by a single document, which indicates that the Domain Name Registrations in issue were made in pursuit of the same business objective. The Complainants have demonstrated by WhoIs database searches that the Respondents have registered with Network Solutions the names or abbreviations of eighteen well-known British enterprises with the addition of "sucks". All were obtained on May 11, 1999. Five have resulted in the parallel complaints which have been referred conjointly to the present Panel. The other four are D2000-0584 (dixonssucks.com), D2000-0585 (freeservesucks.com), D2000-0636 (natwestsucks.com) and D2000-0681(standardcharteredsucks.com).
4. Parties’ Contentions
The Complainants assert the following:
- The Respondents' Domain Name at issue is identical with or confusingly similar to the Complainants' trade marks indicated above.
- The Respondents have no legitimate interest in the names for which the Complainants have registered marks.
- The Respondents registered the Domain Name and are using it in bad faith in that they are seeking to obtain financial gain from it by securing its transfer for a substantial sum to the Complainants and have repeatedly offered it to the Complainants on such terms.
- Accordingly the Complainants seek transfer of the Domain Name in issue to themselves.
The Respondents, while not contesting directly the documentary material submitted as annexes to the Complaint, nevertheless deny that they have acted in bad faith or that they have ever used the Domain Name after registration. In particular:
- They did not secure the Domain Name in order itself to establish any website.
- They did not intend to transfer the registration to anyone other than the Complainants, and in particular not to any disgruntled person who might wish to acquire it in order to host complaints against the Complainants or otherwise to extract revenge. On the contrary their motivation was to protect the Complainants against such risks.
- Mere registration without more cannot amount to use.
5. Discussion and Findings
In accordance with the Dispute Resolution Policy, Paragraph 4(a), the Complainants bear the burden of demonstrating three elements.
Element 1: That the Complainants have rights in a trade or service mark, with which the Respondents' Domain Name is identical or confusingly similar.
As they have clearly demonstrated in their Complaint, the Complainants have a well-known trade mark for banking and associated services in the United Kingdom. This reputation is protected by the registration of the trade marks already referred to in Paragraph 3(1) and further enhanced by the use which they make of their Domain Names also there referred to. The Respondents' explanation of the conduct which they have pursued in relation to the names of various major enterprises is as follows:
"The company was set up in response to an article in The Times newspaper referring to disgruntled consumers registering domain names such as walmartsucks.com to host complaints sites against companies."
The Respondents' registration, consisting of the Complainants' name with the suffix, "sucks" (plus ".com"), is not identical to the Complainants' marks and the question arises whether the registration is confusingly similar to those marks.
Given the apparent mushrooming of complaints sites identified by reference to the target's name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainants? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainants' name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainants are connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainants; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainants. The Complainants have accordingly made out the first element in its Complaint (see the rather similar conclusion on this element in Case D 2000-0477 (walmartcanadasucks.com)).
Element 2: The Respondents must be shown to have no rights or legitimate interests in the Domain Name.
The Complainants' reputation was well established before the Respondents began their activity, as is evident from their own statement of purpose, which is said to be, to help protect enterprises against being bothered by customer sites at which grievances are aired. Complaints sites are only likely to be set up against businesses with considerable reputations. Those who have genuine grievances against others or wish express criticisms of them -- whether the objections are against commercial or financial institutions, against governments, against charitable, sporting or cultural institutions, or whatever -- must be at liberty, within the confines set by the laws of relevant jurisdictions, to express their views. If today they use a website or an email address for the purpose, they are entitled to select a Domain Name which leads others easily to them, if the name is still available.
The Respondents, contrarily, make it plain that their purpose is to have none of such free expression. They want, so they say, to protect against such engines of free speech. They claim as their own legitimate interest that they are in the business of obtaining Domain Names which might embarrass well-known enterprises if the names were allowed to fall into the hands of critics. The Respondents do not, however, act in a wholly altruistic spirit, since, as will be discussed further under Element 3, they seek substantial sums beyond their own costs before they will transfer over the offending registration. This latter aspect has to be brought into account in considering whether the Respondents therefore have any "right or legitimate interest" in the Domain Name, with which they otherwise have no association whatsoever and which they admit to have selected by reference to the Complainants' reputation in their own marks. The Panel finds that there is no justification for the role of officious interferer which the Respondents have taken upon themselves to provide in the manner in which they have chosen to do so. The Complainants have accordingly made out the second element (see likewise Case D 2000-0477 (walmartcanadasucks.com)).
Element 3: that the Respondents registered and are using the Domain name in bad faith, in one of the senses of that term set out in Paragraph 4b of the Dispute Settlement Policy.
The first Complainant received a letter of February 9 2000 from the Respondents offering to transfer the domain name for a "five figure sum" to be paid directly to a charity chosen by the Respondents. This must be read as a reference to a sum of at least GBP 10,000. Subsequently, according to attendance notes whose content has not been challenged by the Respondents, the Complainants' solicitor had two conversations with Mr Joseph Rice of Purge (on March 6 and 29, 2000). The upshot of these was an indication that a payment of somewhere in the region of GBP 5,000, paid directly to Purge, would, subject to checking, be needed to compensate for the time and expense involved. Taken together with Mr Rice's assurance that the whole purpose of registering the name was to enable its transfer to the Complainants, the Panel finds that these facts constitute plain evidence of circumstances indicating that the Respondents registered the name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainants who are the owners of the relevant marks for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Paragraph 4(b)(i) of the Dispute Resolution Policy states that such conduct is of itself to count as registration and use of the Domain Name in bad faith. Accordingly the third and final Element of the Complaint is made out.
The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4a and 4b,
- that the Domain Name in dispute is confusingly similar to the registered trade and service marks of the Complainants;
- that the Respondents have no rights or legitimate interests in respect of the Domain Name; and
- that the Domain Name has been registered and is being used in bad faith.
The Panel accordingly requires that the Domain Name DIRECTLINESUCKS.COM be transferred forthwith to the Second Complainant as specified in the Complaint.
William R. Cornish
August 13, 2000