Complainants are The Travelers Companies, Inc., Travelers Insurance Group Holdings, Inc., The St. Paul Travelers Companies, Inc., Travelers Property Casualty Corp., of United States of America, represented by Simpson Thacher & Bartlett, United States of America.
Respondent is Whois Protection, Info Administrator, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <thetravelers.com> is registered with Rebel.com Services Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2007. On June 12, 2007, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On June 12, 2007, Rebel.com Services Corp 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, Complainants filed an amendment to the Complaint on June 22, 2007. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 18, 2007.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 30, 2007. The Panel finds that it was properly constituted. 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 domain name was created on November 11, 1999. In the period February 2007 to June 2007 the registrar of the domain name has changed three times and the recorded name of the registrant has changed from Admin, Domain, to Whois ID Theft Protection, to Whois Protection (the present Respondent). The last of these changes took place on June 12, 2007, four days after the first filing and service of the Complaint.
Complainants assert, and have filed sworn evidence to show, that Complainants' group of companies engages in insurance business in all states of the United States of America, Canada, the United Kingdom and Ireland. They are a fortune 500 company with a turnover of $25 billion. They claim to be one of the largest insurance groups in the United States of America and that they, and their predecessors, have used the trademark TRAVELERS since 1865. They are the owner of many trademark registrations in the United States of America, Canada, the European Community and elsewhere, which consist of or include the word TRAVELERS. Three of their registrations have achieved incontestable status in the United States of America. Complainants are also the owners of the domain names <travelers.com>, <stpaulstravelers.com> and fifteen further registrations of domain names consisting of, or including the word "thetravelers".
Nothing is known of Respondent other than its recorded Post Office box address. Complainants' documented evidence shows that at various times in March, April and May, the domain name resolved to a portal site providing links to Internet sites offering a variety of services including travel, accommodation, entertainment, finance, business and lifestyle services. Included in the links were links to Complainants' <stpaultravelers> and other websites.
On March 7, 2007, Complainants' external counsel sent a "cease and desist" letter on behalf of Complainants by e-mail and by registered mail at the contact addresses then provided for the domain name. According to Complainant's counsel's sworn testimony she attempted on three separate occasions in February and March 2007 and again on three separate occasions in April 2007 to contact the recorded owner of the domain name by the telephone numbers then provided. On each occasion her attempt was unsuccessful. Complainants' counsel also asserts that no reply has been received to the written and e-mail communications and that a registered letter addressed to the address given on the Whois for the current registrar rebel.com was returned by the US Postal Authorities as "unknown" and undeliverable.
Complainants contend that each of the above-stated names under which the domain name has from time to time been registered are aliases for one and the same person and that that person is a serial cybersquatter against whom, under its various aliases, many adverse decisions have been given under the UDRP. In the Complaint, Complainants refer to Respondent to indicate the domain name registrant under any and all of the alleged aliases.
Complainants contend that the domain name comprises Complainants' well-known TRAVELERS mark with the mere addition of the word "the". Complainants contend that the addition of the definite article does not materially affect the identity of the domain name and that the domain name is clearly deceptively similar to its TRAVELERS trademark. Complainants cite a number of prior Panel decisions in support including; S. Commerce 'n Services., Inc. d/b/a S. Linc v. J Lee, WIPO Case No. D2005-0212, where the panel found that confusing similarity is established "when a domain name wholly incorporates a Complainant's mark and only adds a generic word"; and United States District Court Case TCPIT Holding Co v. Haar Communs, Inc., No. 99 Civ. 1825, 2004 US Dist. LEXIS 13543, where the Court noted that "Despite the addition of articles and/or possessives, the [domain name] variations remain confusingly similar to Plaintiff's mark".
Complainants submit that Respondent, under whatever name it operates, has no rights or legitimate interests in the domain name.
Complainants assert that they have never given Respondent any licence, consent or authority to use the domain name; that Respondent is a serial cybersquatter, is not commonly known by the domain name, is not making any legitimate non-commercial use of the domain name and that there is no evidence that it uses the domain name in connection with the bona fide offering of goods or services. Complainants contend that Respondent's only use of the domain name is in the operation of a portal site providing links to other commercial websites for which, Complainants presume, Respondent derives revenue on a "pay-per-click" basis. Complainants assert that such use is commercial and is not a bona fide use in connection with the supply of goods or services. Complainants cite in support of this proposition a prior panel decision involving, so Complainants assert, Respondent under one of its former aliases – Fry's Elecs, Inc. v. Whois ID Theft Prot., WIPO Case No. D2006-1435.
Complainants point to a number of circumstances as indicating registration and use of the domain name in bad faith. Complainants say that Respondent clearly knows of Complainants' prominence in the insurance field since its website, copies of which Complainants put in evidence, shows advertisements for insurance services, including Complainants' TRAVELERS and ST PAUL TRAVELERS trademarks and provides hyperlinks to several of Complainants' sites. They say that the many prior panel decisions against Respondent, under its various aliases and involving substantially similar circumstances, establish that it is a serial cybersquatter engaged in a pattern of conduct of registering domain names corresponding to well-known trademarks in order to deny access to them by the trademark owner and to profit from the confusion of Internet users thereby attracted to Respondent's site.
Complainants cite, as further evidence of bad faith, Respondent's concealed identity, failure to provide other than a post office box address, failure to reply to telephone calls, e-mails and correspondence and adoption of several aliases. Complainants cite, among others, the well-known and oft-quoted prior panel decision in Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The onus is on Complainants to establish each of the above circumstances. However, where pertinent facts are uniquely within the knowledge of Respondent the burden reverts upon a prima facie showing by Complainants. See for example, Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.
Complainants have clearly established strong trademark rights in their TRAVELERS trademark. The domain name differs only by the trifling addition of the word "the". It is obvious, and many panelists have so found, that such additions do not suffice to negative a finding of confusing similarity. Some of those decisions have been cited by Complainants. The Panel adopts the reasoning in those decisions, and it need not be repeated here.
The Panel finds that the domain name is confusingly similar to trademarks in which Complainants have rights.
Complainants' evidence and the many cases referred to by Complainants, strongly support their contention that Respondent, under its previous name, is the same as the person that has been the subject of those prior cases. Complainants' evidence shows further that they have not authorized Respondent's use of their trademark, nor is there any relationship between Complainants and Respondent. The evidence shows that Internet searches fail to reveal any use by Respondent of that or any similar name otherwise than in the domain name and raises a strong presumption that Respondent's use is commercial. Respondent had an opportunity to respond to Complainants' evidence and assertions, but has failed to do so. This raises a presumption that Respondent is unable to rebut them – see for example Fry's Case, supra.
The evidence does show that prior to receiving notice of the dispute in relation to the domain name, Respondent was using it in connection with the offering of services, namely its portal service. However, that does not suffice to show that such use was in connection with the bona fide offering of those services. The provision of a portal service is not illegitimate as such. What deprives it of bona fides in this case is the bad faith adoption and use of Complainants' well-known trademark (see below). As this Panelist and many others have previously pointed out, although the Policy relates the issue of bona fides to the offering of goods or services rather than with the manner in which the domain name is used, lack of bona fides in the adoption and use of the domain name infects the bona fides of the offering of goods and services in connection with it. See for example HelpCaster Technologies Inc, v. Venkatesh, C.R. and DotCom Infoway, WIPO Case No. D2007-0603 and cases there cited.
Complainants' trademark TRAVELERS has been in use for well over a hundred years; its use has been prominent and extensive. The use of the mark on Respondent's website shows clearly that Respondent knows it is Complainants' mark and a strong presumption is raised that it knew of it at the time of registration. Respondent's conduct in frequently changing the details of ownership of the domain name, failure to provide adequate or accurate contact details, and failure to answer communications suggest deliberate attempts to avoid identification. The Panel accepts Complainants' submission that Respondent is a serial cybersquatter and that it has adopted the domain name deliberately to misleadingly attract users to its website for commercial gain. No other inference can be drawn from the evidence. Respondent had an opportunity for rebuttal but did not take it.
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 <thetravelers.com> be transferred to the Complainants.