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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Provident Financial plc and Provident Insurance plc v. Mode L
Case No. D2007-0149
1. The Parties
The Complainant is Provident Financial plc and Provident Insurance plc, of Bradford, Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mode L, of Geneva, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <providentinsurance.com> (hereinafter “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2007. On February 6, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On February 7, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 February 9, 2007. In accordance with the Rules, paragraph 5(a), the date due for Response was March 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2007.
The Center appointed Anna Carabelli, Josй Carlos Erdozain and Michael Treis as panelists in this matter on April 20, 2007. 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.
Since the Domain Name was originally set to expiry on April 8, 2007, during the month of April the Center and the Complainant inquired with the Registrar about the formalities to be carried out in order to ensure that the Domain Name would not be deleted prior to the conclusion of the proceedings. Consequently, according to Paragraph 184.108.40.206. of the ICANN Expired Domain Deletion Policy, the Complainant decided to renew the Domain Name registration in order for the proceedings to continue.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint complies with the requirements of the Policy, the Rules and the Supplemental Rules.
On May 4, 2007, the Panel extended the deadline for filing the decision to May 11, 2007.
4. Factual Background
Provident Financial plc and Provident Insurance plc are related companies, the latter being a subsidiary of the former as confirmed by the Provident Financial plc Annual Report and Financial Statement submitted by the Complainant (Annex 3).
The Complainant is active in the insurance and financial services industries.
The Complainant submitted a list of several national, community and international trademark registrations and a few printouts of an online trademark management database as evidence of trademark registrations (Annex 4). The Panel has directly accessed the official trademark registers information, available online and received confirmation of the following trademark registrations in the name of the Complainant.
A) International trademark registration:
April 12, 2000
B) Community trademark registration:
April 3, 2002
C) United Kingdom trademark registrations:
March 6, 1996
November 10, 2000
The Complainant also registered several domain names incorporating the words “providentinsurance”, some of which are being used by the Complainant on a number of websites.
The Respondent registered the Domain Name on April 8, 2005.
The Domain Name is being used by the Respondent to operate a portal which through sponsored links and key words redirects to websites, some of which offer for sale the Complainant’s direct competitors’ products and services.
5. Parties’ Contentions
The Complainant contends that:
- Provident Financial plc and Provident Insurance plc are members of an international financial service group with about 4 million customers and which is listed on the U.S. Stock Exchange;
- The Provident Financial group of companies was founded back in 1880, and it is actually present in various countries among which the United Kingdom, the Republic of Ireland as well as in several eastern countries and in Mexico;
- The Complainant holds various national, community and international trademark registrations incorporating the words “provident” and “provident insurance”;
- The Complainant holds several domain name registrations incorporating the trademark PROVIDENT INSURANCE and is operating a few websites under some of them;
- The Complainant has established a substantial reputation and goodwill in its trademarks and names in connection with financial services and insurance industries, over the years;
- The Domain Name is confusingly similar to the Complainant’s registered trademarks as it incorporates them in their entirety;
- The Respondent has no rights or legitimate interests in the Domain Name as
(i) the Respondent does not appear to be known by the Domain Name, and (ii) neither the Complainant nor any of its subsidiaries or affiliated companies have authorized the Respondent to use any of their registered trademarks;
- The Respondent has taken active steps to conceal its true identity upon registering the Domain Name as the mailing address and telephone numbers listed in the eNom, Inc. Whois database do not belong to the Respondent.
- The Domain Name is being used to operate a referral portal which, through sponsored links, redirects Internet users to third parties’ websites, some of which offer for sale the Complainant’s direct competitors’ products and services and, in doing so, it creates a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation, or endorsement of the website;
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminarily, the Complainant has submitted evidence to support that the companies filing the Complaint are related to and have sufficient interest in the Domain Name for them to be joined in this action. Therefore, the Panel, in line with previous WIPO UDRP decisions, accepts Provident Financial plc and Provident Insurance plc as the Complainant (see Adidas International Marketing BV and Adidas-Salomon AG v. Sonia Eguia,
WIPO Case No. D2006-0475; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. John Morgan,
WIPO Case No. D2004-0537).
A. Identical or Confusingly Similar
The Complainant has established rights in the trademarks listed under paragraph 4 above.
The Panel, following previous WIPO UDRP decisions, considers that the Domain Name is confusingly similar to the Complainant’s registered trademarks as it incorporates them in their entirety (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com,
WIPO Case No. D2002 – 0313);
Consequently, the Panel finds that the Complainant meets the requirement of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. According to a consistent line in WIPO UDRP decisions, in such a case the burden of proof shifts on to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,
WIPO Case No. D2002-0683). As a consequence, the Respondent’s failure to rebut the Complaint’s allegations, allows the Panel to infer, taking into consideration the circumstances of this case, that the Respondent has no such rights or legitimate interests.
Moreover, the Panel finds, in line with previous WIPO UDRP decisions, that the Respondent’s use of the Domain Name to divert Internet users to its website and redirect them to other websites, some of which offer for sale the Complainant’s direct competitors’ products and services, presumably receiving compensation for this redirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy, (e.g.: Lyonnaise de Banque v. Richard J.,
WIPO Case No. D2006-0142, Motorola, Inc. v. Mr. Josip Broz,
WIPO Case No. D2002-1063).
C. Registered and Used in Bad Faith
As established under paragraph 6.A. above the Domain Name is confusingly similar to the Complainant’s trademarks which were registered before the Domain Name registration by the Respondent.
The Panel accepts that the Complainant is well-known in the insurance and financial services industries given: (i) the number of clients attended (about 4 millions); (ii) the number of years of operation (it was founded back in 1880), and (iii) its presence in several countries (United Kingdom, Republic of Ireland, Mexico, Poland, Czech Republic, Hungary and Slovakia) see Annex 3.
In the light of the above and in consideration of the fact that the Respondent has been using the Domain Name in connection with insurance and financial services offerings, the Panel finds that the Respondent was aware or should have been aware of the Complainant’s trademarks at the time the Respondent registered the Domain Name (see Rockwool International A/S v. Ismail Tokoglu,
WIPO Case No. D2005-0358; Citigroup Inc., Citigroup v. Phayze Inc.,
WIPO Case No. D2003-0430; Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397).
Moreover, the Panel is convinced, based on the evidence submitted by the Complainant, that the Respondent has taken active steps to conceal its true identity as registrant of the Domain Name (Annexes 10, 11). The Panel, according to previous WIPO UDRP decisions, considers such a circumstance as a clear sign of bad faith registration. (e.g.: Banca Intesa S.p.A. v. Hilary Ammann,
WIPO Case No. D2006-0496; Banco Bilbao Vizcaya Argentaria S.A. v. N/A,
WIPO Case No. D2003-0996; Telstra Corporation v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
Accordingly, the Panel deems that the Domain Name was registered by the Respondent in bad faith.
Finally, the Domain Name is being used as a referral portal to divert Internet users, through “Spondored Lins” and “Key Words”, to third parties’ sites, some of which offer for sale the Complainant’s direct competitors’ products and services. Furthermore, it is very likely that the Respondent’s purpose in such use, is that of collecting referral or click-through fees.
Both of the above circumstances have been held by various WIPO UDRP decisions as evidence of bad faith use of a domain name (see Members Equity PTY Limited v. Unasi Management Inc.,
WIPO Case No. D2005-0383; Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc.,
WIPO Case No. D2005-1336; Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556).
In the light of all the above circumstances, the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <providentinsurance.com> be transferred to the Complainant.
Josй Carlos Erdozain
Dated: May 11, 2007