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A D Banker & Company v Domain Invest Case No D2010-1044

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A D Banker & Company v Domain Invest Case No D2010-1044A,D,v,Case,D2010,&,d2010,Amp,case

     ARBITRATION AND MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

    A. D. Banker & Company v. Domain Invest

    Case No. D2010-1044

1. The Parties

    1.1 The Complainant is A. D. Banker & Company, Kansas, United States of America, represented by

    Hovey Williams LLP, United States of America.

    1.2 The Respondent is Domain Invest, Luxembourg, represented by Law.es, Spain.

2. The Domain Name and Registrar

    2.1 The disputed domain name <adbankers.com> (the “Domain Name”) is registered with Fabulous.com.

    (the “Registrar”)

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on

    June 23, 2010. On June 24, 2010, the Center transmitted by email to the Registrar a request for

    registrar verification in connection with the Domain Name. On June 25, 2010, Fabulous.com

    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” or “UDRP”),

    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”).

    3.2 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 June 29, 2010. In accordance with the Rules,

    paragraph 5(a), the due date for Response was July 19, 2010. The Response was filed with the

    Center on July 19, 2010 and a corrected form of the Response was filed later that day.

3.3 On August 16, 2010 the Complainant filed a “Request for Further Statement” in order to rebut factual

    allegations in the Response that the Complainant contended it could not have been expected to

    anticipate in the Complaint. The following day the Respondent‟s representative objected by email to

    the Complainant‟s filing, asserting that no excuse had been provided by the Complainant for the 26

    day delay between the filing of the Response and the filing of the “Request”.

    page 2

    3.4 The Center appointed Matthew S. Harris, Debra J. Stanek and Diane Cabell as panelists in this matter

    on September 2, 2010. 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.

    3.5 On September 10, 2010, the Panel, having reviewed the case file, issued a Procedural Order, a copy

    of which is at Annex A to this decision. Pursuant to that Procedural Order, the Complainant filed a

    further submission on September 17, 2010. The Respondent also filed a further submission on Friday

    September 24, 2010. Exhibits which were inadvertently left out from the Respondent‟s further

    submission were filed by the Respondent on Monday September 27, 2010. The question of the

    admissibility of those submissions and exhibits is addressed in greater detail later on in this decision.

4. Factual Background

    4.1 The Complainant is a Kansas limited liability Company, that offers courses, training and workshops in

    the field of insurance. It (or more likely its predecessor in business) has used the terms “A. D. Banker”

    and “A. D. Banker & Company” in the United States since 1982. It has offered its goods and services

    online from a website operating from the <adbanker.com> domain name since 1998.

4.2 The Complainant is the owner of the following U.S. registered trade marks:

    (i) Registration No. 1351051 for the word mark A.D. BANKER in class 41 for educational services

    filed on September 17, 1984;

    (ii) Registration No. 1686820 for the word mark A. D. BANKER & COMPANY in class 41 for

    educational services filed on April 1, 1991;

    4.3 The Complainant acquired these marks by assignment in 1997 from a partnership trading using the A.

    D Banker & Company name.

    4.4 The Respondent goes by the name of “Domain Invest”. This appears to be either the trading name or

    previous name of DI SA, a Luxembourg company.

    4.5 WhoIs details for the Domain Name record that the Domain Name was first registered on

    August 22, 2000.

    4.6 Historic WhoIs records also record that as at the April 27, 2010 the Domain Name was registered in

    the name of WhoIs Privacy Services. As at June 22, 2010 Domain Name details had changed so as

    to record the Respondent as the registrant. The WhoIs record for that date also states that the record

    had last been modified on June 21, 2010.

    4.7 As at June 22, 2010 the Website that appeared to be operating from the Domain Name was generated

    by a pay-per-click or domain name parking service. The searches displayed on the page were as

    follows:

    Under the heading “Most Popular”:

    Insurance Continuing Education

    Online Checking

    Insurance Classes

    Insurance

    Bank Account

    Internet Banking

    Continuing Education

    page 3

    Online Banking

    Under the heading “Popular Categories”:

    Ing

    Banks

    Ad Banker

    Apartment or Rent

    Register

4.8 The meta data for that page also included references to “ad banker” and “Ad Banker”.

4.9 If the term “Ad Banker” was clicked upon, the following sponsored listing would be displayed:

    Ad Banker Insurance School

    Personalized Financial Advertising Tools

    Cheap Insurance

    Hondros College Ohio Insurance Courses

    Ad Banker Insurance

    4.10 None of these sponsored listings linked to websites operated or authorised by the Complainant.

    4.11 A few days later the registrant of the Domain Name recorded in the WhoIs appears to have changed

    to record “DI S.A.” as the registrant.

    4.12 More recently the nature of the searches appearing on the website operating from the Domain Name

    has changed. The references to “Ad Banker” and “education” related searches appear to have been

    removed. For example, as at July 12, 2010, the searches that appeared under the heading “Most

    Popular” were as follows:

    The Banker

    Internet Marketing Online

    Internet Marketing Services

    Pop Displays

    Marketing and Advertising

    Online Marketing Services

    Search Engine Marketing Company

    Digital Marketing

4.13 The Respondent had been a party to previous proceedings under the Policy; i.e. GoFit LLC v. Dom

    Administration, DI S.A. and International Services Company SA, WIPO Case No. D2010-0367. The

    three person panel in that case found in the Respondent‟s favour.

5. Parties’ Contentions

A. Complaint

    5.1 The Complainant refers to its two United States trade mark registrations and asserts that the Domain

    Name is identical or confusingly similar to those marks.

    5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain

    Name contending that none of the examples of rights or legitimate interests provided by the Policy

    apply. Instead, it asserts that the Respondent is attempting to profit from the Domain Name by

    misleading or diverting consumers to the websites of commercial rivals of the Complainant.

    page 4

    5.3 The Complainant contends that the Respondent knew or should have known of the Complainant‟s

    registered trade marks when it registered the Domain Name. It maintains that the website operating

    from the Domain Name as at June 22, 2010 shows that the Respondent has intentionally attempted to

    attract for commercial gain Internet users to its website by creating a likelihood of confusion with the

    Complainant‟s marks. Particularly complaint is made about the fact that if an Internet user clicks on

    the “Ad Banker” the website displays a page of links to the Complainant‟s competitors.

    5.4 The Complainant also claims that the Respondent has failed to make good faith use of the Domain

    Name for a substantial period of time for a legitimate business. This is said to indicate bad faith and

    reliance is placed on the decision in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v.

    Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.

B. Response

    5.5 The Respondent asserts that it is the business of registering generic or descriptive domain names of

    use in connection with advertising or other suitable purposes. It claims to have acquired the Domain

    Name as part of a bulk purchase. It claims that it cannot provide the document in which the sale is

    recorded because of confidentiality provisions in the same.

    5.6 The Respondent contends that the reason why it acquired this specific Domain Name was because of

    its obvious potential use to provide information about the banking sector as it comprises “ad”, which is

    a reference to “advertising”, and “bankers”.

    5.7 The Respondent does not deny the Domain Name has been used in the fashion described by the

    Complainant but contends that these were the uses of the previous owner of the Domain Name for

    which it is not responsible. It contends that immediately upon registration the “Respondent changed

    the DNS settings so that the Domain Name resolved to web pages depicting advertisements for

    banking”. However, it claims that it would have taken “up to 3 days” for that to be reflected in the

    sponsored results displayed. It also claims that prior to acquisition it undertook a European trade mark

    search using the OAMI database and that “no European trade[]marks were located”.

    5.8 The Respondent also contends that neither it nor the previous registrant of the Domain Name had

    given any prior warning of these proceedings from the Complainant.

    5.9 The Respondent claims that a TESS search shows only the “A.D. Banker & Company” mark for

    educational services in relation to Insurance. It contends that the Domain Name is a reference to

    “ad“ and “bankers” and claims that the Complainant‟s reputation is limited to the United States

    (providing evidence of an Alexa statistics in relation to the Complainant‟s own website). In the

    circumstances, the Respondent asserts that although the “Complainant may have established rights to

    pass the threshold test in paragraph 4(a)(i) ... these rights are extremely limited”.

    5.10 On the issue of rights or interests the Respondent contends that the Complainant‟s case amounts to

    no more than assertion without supporting evidence and criticises the “burden shifting” rule that has

    been applied in respect of this element of the Policy in a number of cases.

    5.11 In any event the Respondent contends that it holds a right or legitimate interest by reason of the fact

    that it “invests in generic and descriptive domain names for use in connection with dedicated websites

    providing goods or services or as generic popular search terms to provide advertising and other

    content”.

    5.12 The Respondent also provides evidence in the form of Google searches that is said to show that the

    terms “ad” and “bankers” are not exclusively associated with the Complainant. Further, so far as the

    combination of these terms is concerned in the Domain Name the Respondent contends that “[w]hile

    perhaps not the „best‟ keyword search domain, the combination of „ad‟ and „bankers‟ is not illogical”.

    page 5

    5.13 The Respondent denies that it was aware of the Complainant or its rights when it acquired the Domain

    Name and claims its immediate post registration actions “removed any potentially conflicting content”.

    Reference is made in this respect to Churchill Insurance Co Ltd v. Churchill Financial Services Limited,

    NAF Claim No. 1270466.

    5.14 On the issue of bad faith the Respondent refers, inter alia, to various factors which are said to point

    away from bad faith in this case. They include an alleged lack of fame of the Complainant‟s marks,

    the fact that the parties are in different geographical places and the alleged limited scope of the marks.

    5.15 It claims that the Domain Name was registered because of its alleged generic nature, to be used in its

    generic sense without any intention to target the Complainant. It denies “constructive notice” of the

    Complainant‟s marks.

    5.16 As to the metatag data relied upon by the Complainant, the Respondent claims that this was data that

    existed prior to the Respondent‟ registration.

    5.17 The Respondent also makes reference to the fact that the domain name was initially registered over

    10 years ago and yet the proceedings have only been commenced now. The Respondent cites in this

    respect Charter Communications Inc v. CK Ventures Inc. / Chaterbusiness.com, WIPO Case No.

    D2010-0228, which is said to be authority for the proposition that a delay in commencing proceedings

    “raises an inference that the Complainant did not truly believe that [the] Respondent had engaged in

    bad faith registration”.

    5.18 Last, the Respondent claims that it is “troubled” by the fact that the mark upon which the Complainant

    relies is a “Nunc Pro Tunc” assignment. It claims that this sort of assignment is “inconsistent with a

    valid assignment that requires assignment of all goodwill”.

C. Complainant’s additional Submission.

5.19 The Complainant in its additional submission asserted that although the direct references to “Ad

    bankers” had disappeared from the web page operation from the domain name, this was nothing more

    than a “whitewash” of the home page. According to it, there were still to be found links to its

    competitors. In particular, it listed the following links, which it claimed appeared on July 19, 2010:

    “Insurance CE Course

    Insurance Education

    Insurance Education Online

    Insurance Company

    Kaplan Ins Education.

    Insurance Cheap

    Insurance Certification

    Insurance Quotes

    Hondros College - Ohio Insurance Courses”

    5.20 The evidence submitted in support of this assertion took the form of two printouts of pages operating

    from the Domain Name on July 19, 2010.

    5.21 The Complainant also contended that as at July 20, 2010, the meta tags for the web page appearing

    from the Domain Name contained references to “insurance classes” and “insurance” and exhibited a

    copy of the web page source code in this respect. Exactly which page was being referred to in this

    respect was unclear.

    5.22 The Complainant also claimed that the website had been taken down and that this was “suspect”.

    It contended that:

    page 6

    “Wholesale removal of the website smacks of bad faith or, at a minimum, an inability to control

    the website's content, which illustrates the inherent deficiencies in Respondent's position”.

    5.23 The submission also included further submissions on the issue of whether the term "Ad Banker's" was

    distinctive or generic. For reasons explained later on in this decision, it is not necessary to record

    these claims.

    5.24 Last, the Complainant addressed the issue of why it waited 26 days to make a request to put in further

    submission. It claimed this was because it deliberately waited until a Panel had been appointed,

    claiming:

    “Being that no rules expressly address a party's request to supplement its original filing or the

    proper timing of such a filing, and the fact that there are few cases explaining the protocol for

    making such a request, Complainant was waiting to submit its Request once the Panel was

    appointed”

    It maintained that the Respondent had suffered no prejudice by the delay.

D. Respondent’s additional Submission.

    5.25 The Respondent clarified in its supplemental response that the Domain Name was acquired pursuant

    to a written agreement dated June 7, 2010. Respondent offered to provide a redacted version of the

    agreement if the Panel so required. It asserted that it first became the registrant of the Domain Name

    on June 21, 2010 and repeated its claim that the DNS settings for the Domain Name were changed

    “upon gaining control”.

    5.26 It asserted that the website pages appended to the Complaint‟s additional submission did not show

    the landing page displayed when one enters a Domain Name in a browser, but the page generated

    after a query made in the search box displayed on that landing page. In support of this the

    Respondent referred to the long url appearing at the bottom of the page. It also provided a copy of an

    email from the Respondent‟s pay-per-click provider “DDC”. In that email DDC explained:

    (i) that even if the domain name owner blocks certain keywords (for example, “insurance” and

    “insurance classes”), the user can still generate search results related to those keywords by

    searching against those terms;

    (ii) by searching against specific terms, the person entering the search will influence not only the

    sponsored links but the “search categories” shown and the meta tags that appear in the source

    code for the page.

    5.27 The Respondent also further contends that it has learnt from DDC (although this is not directly

    reflected in the email) that so far as changes to search categories and meta tags are concerned, the

    speed at which this occurs “depends on the number of times the search is entered compared with the

    total traffic that the Domain Name achieves”. The Respondent claims that it was unaware that this

    was how the DDC service operated and that it was actively working with DDC to “find a solution and

    failing to find a solution will be forced to alter service providers to prevent a similar situation from

    arising in future”.

    5.28 The Respondent admitted that it has deactivated the Domain Name, but contends that this was not

    because it was trying to hide anything, but simply because it considered it to be the most professional

    course of action until the various technical issues described had been resolved.

    5.29 The Respondent also goes on to object both generally to the Complainant being able to submit a

    Supplemental Response and specifically to those parts of the Complainant‟s Supplemental Response

    that involve further submissions on the issue of whether the term "Ad Banker's" was distinctive or

    page 7

    generic, as well as to the timing of filings, the effect of which was to give Complainant a much longer

    period in which to prepare its supplemental filing than that provided to Respondent.

6. Discussion and Findings

    6.1 Under paragraph 4(a) of the Policy, the Complainant has the burden of proof of showing the following:

    (i) The domain name is identical or confusingly similar to a trademark or service mark in which the

    complainant has rights; and

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

    (iii) The domain name has been registered and is being used in bad faith.

    6.2 The Panel considers these requirements in turn below. Before it does so it addresses the question of

    whether or not and to what extent the additional submission filed by the Complainant should be

    admitted in these proceedings and the issue of the procedure to be followed when a party wishes to

    submit the same.

A. Admissibility of supplemental submissions

6.3 A supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam

    Landers, WIPO Case No. D2003-0780, the panel stated as follows:

    “As is by now well-established, the Rules do not provide any right of reply. Parfums Christian

    Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental

    submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v.

    Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual

    assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case

    No. D2001-0237 (June 11, 2001), they should be allowed sparingly.”

    6.4 However, on reviewing the case file the Panel formed the preliminary view that the Respondent‟s

    factual submissions as to changes in DNS settings could not have been anticipated by the

    Complainant. On the Respondent‟s own case there was a period of time, albeit brief, following the

    transfer of the Domain Name to the Respondent in which the landing page for the Domain Name

    carried links that at least prima facie suggested that the Domain Name had been registered and used

    in a fashion which suggested an intention to take advantage of the A.D. BANKER mark. Given the

    Respondent‟s assertions that this was merely temporary, the Panel considered it appropriate to

    provide the Complainant with an opportunity to address that issue. The Procedural Order was drafted

    accordingly.

    6.5 Although the Procedural Order left it open to the Respondent to put forward arguments as to why no

    additional submission ought to be admitted in this respect, the Panel remains of the view that was

    appropriate to admit further evidence and argument from the Complainant on this issue.

6.6 The Complainant‟s submission also goes much further. It contains submissions and argument as to

    the extent to which “Ad Bankers” is distinctive of the Complainant. This is the sort of issue that the

    Complainant was quite capable of addressing in its original Complaint. Further, the Procedural Order

    did not invite further argument in this respect. Therefore, that part of the Complainant‟s additional

    submission has been ignored.

    6.7 As the Complainant‟s further submission has in part been admitted, it follows that it is appropriate to

    admit the Respondent‟s further submission insofar (but only insofar) as it responds to the same. The

    exhibits to that submission were submitted late. However, it is not necessary to consider whether they

    page 8

    should or should not be admitted as the Panel is of the view that this material does not affect the

    Panel‟s reasoning and decision in this case.

    6.8 There is a further procedural issue here which was touched upon in the Procedural Order. That is the

    issue of the procedure to be adopted by parties when they wish to file additional submissions. The

    Complainant in this respect issued a Request to file a supplemental submission. It is an approach that

    was suggested in a few early decisions under the Policy; see The Thread.com, LLC v. Jeffrey S.

    Poploff, WIPO Case No. D2000-1470; Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise

    WIPO Case No. D2001-0237 and Document Technologies, Inc. v. International Electronic

    Communications Inc., WIPO Case No. D2000-0270.

    6.9 However, it is an approach that does not seems to have found general favour amongst panelists as a

    whole in recent years. Also, the fact of the matter is that for good or ill, parties frequently submit

    additional submissions. In the early days of the Policy, the Center would leave it to the panel to decide

    whether it wished to see those documents, but the current practice is to place these documents before

    the panel and the panel will then consider whether to take any notice of the same. Rarely does a

    panel actually take any notice of these documents. However, whether a formal request or application

    was made by one of the parties in this respect now seems to play little part in whether or not the

    document is considered.

    6.10 There are also good reasons why “motions”, “applications” and “requests” should not be encouraged

    in this situation. As was stated in St Andrews Links Ltd v. Refresh Design, WIPO Case

    No. D2009-0601, the process provided by the Policy is ill suited to the making and hearing of

    procedural applications and requests. It also intended to be a process on paper that is directed to the

    speedy resolution of certain sorts of domain name disputes. Panels are expressly mandated by

    paragraph 10(c) of the Rules to ensure that proceedings take place with “due expedition” and the

    periods of time fixed by the Rules should only be extended in “exceptional cases”. Applications of this

    sort jeopardise that process.

    6.11 Accordingly, in the St Andrews case the panel, instead, suggested that a better way of dealing with

    this was as follows:

    “..[i]n a case where a party wishes to file a supplemental submission not formally prescribed by

    the Policy or Rules, the appropriate way to proceed is to prepare a set of reasons as to why it

    should be allowed to do so. This should then be filled in or together with that

    supplemental submission. The reasons given should set out clearly and cogently why the

    additional submission falls within the scope of one of the limited sets of circumstances in which

    additional submission are submitted” (emphasis added)

    6.12 The panel in St Andrews also noted that this was the solution to the issue of uncalled for supplemental

    fillings that has been successfully adopted by at least one other domain name ADR process (see

    footnote). Further, this provides the other party with notice of the submission.

6.13 This Panel would endorse that approach.

B. Identical or Confusingly Similar

    6.14 The Respondent accepts that the Complainant “may” have satisfied the threshold requirement set

    down by the Policy when it comes to an assessment of the first limb of the Policy.

6.15 In fact the Complainant has clearly done so. Contrary to the Respondent‟s contentions, the Panel is

    satisfied that the Complainant is the owner of a U.S. registered trade mark for “A.D. BANKER” as a

    word mark. It is also the owner of another word mark for “A.D. BANKER & COMPANY”. The most

    sensible reading of the Domain Name is as the terms “ad” and “bankers” combined with the “.com”

    TLD.

    page 9

    6.16 The relevant comparison to be conducted here is of mark and domain name only. Where the mark is

    registered and where the domain name is used is not of itself relevant. Conducting the relevant test

    the Panel concludes that the Domain Name is “confusingly similar” to the Complainant‟s marks as that

    term is understood under the Policy.

    6.17 The Panel has also taken little notice of the Respondent‟s questioning of the assignments by which

    the relevant marks have came into the hands of the Complaint. Where a mark has proceeded to be

    granted a panel will rarely entertain arguments to the effect that a trade mark that is relied upon is in

    some manner invalid (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected

    UDRP Questions). The proper forum in relation to that argument is not proceedings under the Policy

    but proceedings in the relevant trade mark registry or national court. In this case it is not validity that is

    questioned, but ownership. However, the same principal applies i.e., that a Panel will be reluctant to

    second guess the decision of a national trade mark registry in relation to the operation of its own

    register.

    6.18 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the

    Policy.

C. Rights or Legitimate Interests

    6.19 The Panel accepts that the Domain Name in this case has in the past been used in connection with a

    “domain name parking” or “pay-per-click” service. That use appears to have continued since the

    Domain Name was registered in the name of the Respondent. The Respondent makes a more

    general claim that it registers domain names “for use in connection with dedicated websites providing

    goods or services or as a generic popular search terms to provide advertising and content”, but

    essentially does not appear to deny that it is with pay-per-click use in mind that the Domain Name was

    primarily registered and used.

    6.20 It is possible for use of a domain name for a parking site with advertising revenue generating

    sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy.

    For example, if a registrant intends to profit solely from the descriptive nature of the word or words in

    the domain name without intending to take advantage of a third party's rights and reputation in that

    term, then it may have a right or legitimate interest in the domain name (see Section 2.2 of the WIPO

    Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the

    domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise

    take advantage of a similarity with another's mark then such use would not provide the registrant with

    a legitimate interest in the domain name (see, for example, the decision of the three member panel in

    Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

    6.21 Therefore, in a case such as this, the question of the existence or otherwise of a legitimate interest will

    involve similar questions of intended use that arise in the context of an examination of the issue of bad

    faith. It is however, not necessary to consider these points in greater detail, given the Panel‟s findings

    on bad faith set out below.

D. Registered and Used in Bad Faith

    6.22 As the Panel has already recorded, there is little doubt that the Respondent registered the Domain

    Name with pay-per-click or other advertising use in mind. The key issue is, instead, whether the

    Respondent sought by means of that use to profit from the similarities between the Complainant‟s

    mark rather than any generic meaning of the domain name. If it did, the Domain Name is likely to

    have been registered and used in bad faith.

    6.23 There are a number of factors that point in the direction of a finding of bad faith. The first is the nature

    of the Domain Name itself. The Domain Name can be read as the terms “Ad” and “Bankers” in

    combination and the Respondent has not sought to argue that the Domain Name can be sensibly read

    page 10

    in any other way. Indeed, it contends that was with this combination in mind that the Domain Name was registered.

    6.24 Whilst the terms “Ad” and “Bankers” may be each capable of being understood as ordinary English

    words (or in the case of “Ad” a common abbreviation for an ordinary English word) in isolation, there is no obvious and compelling reason as to why they might be combined. Prima facie, the Domain Name

    suggests a reference to the Complainant and the Complainant‟s mark.

    6.25 However, the Respondent addresses this issue head on in its Response. It claims that the Respondent intended and intends to use the Domain Name in order to promote content related to advertising and bankers. It accepts that this is “Perhaps not the „best‟ keyword search domain”, but contends that it is not an entirely illogical combination for that purpose. The assertion is backed up with a witness statement signed by Markus Schnermann, the general manager of the Respondent.

    6.26 The Panel accepts that this is not entirely implausible explanation for the registration and would be reluctant to conclude that Schnermann statement is untruthful which it would need to do if the Complainant is to succeed in these proceedings) in the absence of further compelling evidence in this respect.

    6.27 This leads the Panel on to the second factor that points to bad faith. That is the fact that following registration of the Domain Name in the name of the Respondent, the main web page of “landing page”

    that operated from the Domain Name that contained links and searches that could only sensibly be understood as references to the Complainant‟s mark. They include searches for “Ad Bankers” itself and even more tellingly “Insurance Continuing Education”. There is no obvious connection between the alleged generic reading of the Domain Name and “Insurance of Continuing Education”. The appearance of that search term can only be explained as a reference to the trade mark meaning of the Domain Name.

    6.28 Sensibly, the Respondent does not attempt to defend that use. Instead, it claims that these search terms resulted from the pay-per-click settings chosen by the previous owner of the Domain Name. Claims by respondents that they are not responsible for material advertised from their domain names that result from the actions of third parties, such as “pay-per-click” provider or a previous owners, are

    frequently given short shrift by panels and rarely are successful in preventing a finding of bad faith. The reasoning that panels give in such cases may vary. Sometimes, the reasoning is simply that the respondent‟s assertions are false and what appears provides direct evidence of the registrant‟s intention. At other times, the knowledge of the person alleged to be responsible for the links is imputed to the registrant (see for example, paragraphs 6.58 and 6.59 of Aubert International SAS and

    Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). Some panels (although this is

    more controversial) have adopted concepts of “wilful blindness” (see, for example, the cases cited at paragraphs 6.50 to 6.52 of the Aubert International SAS case supra). However, regardless of the

    reasoning adopted, the outcome is the same.

    6.29 Nevertheless, the Respondent also contends that there is another unusual factor in this case, which means that it should not be held responsible for these links. It is, according to the Respondent, a 1question of timing. It claims to have registered the Domain Name either on June 21 or June 22, 2010.

    The Complaint was issued only on June 23, 2010 and the evidence of the web pages operating from the Domain Name which contained the problematic links relied upon in the Complaint were dated June 22, 2010. It asserts that although it changed the settings for the Domain Name “immediately” on registration, this would take several days (the Respondent suggests up to 3 days) for these changes to be “reflected in the various cached servers throughout the world”. Given this, according to the

    Respondent it would be unfair to draw any conclusions adverse to the Respondent‟s motivations and

     1 The initial Response claims the date to be June 22, 2010 but the WhoIs record for the domain name suggests that the record was updated on June 21, 2010. In the Respondent‟s supplemental submission the date June 21 and June 22 are both used.

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