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October 20, 2010 / Nate Harris

Churchill Insurance Co. v. Midland

Summary of Churchill Insurance Co. Ltd. v. Mark Midland
(Nat. Arb. Forum Claim No. 1345740)

Filed: September 10, 2010; Decided: October 14, 2010 (Panelist: Fernando Triana, Esq.)

Disputed domain name: <churchilltips.com>

churchilltips.com

The Parties

Complainant Churchill Insurance Co. Ltd. (“Churchill”) is a well-known insurance company that owns numerous trademark registrations for the mark CHURCHILL dating to 1997. Churchill has operated websites at <churchill.com> and <churchill.co.uk> since 1995 and 1996, respectively.

Respondent Mark Midland registered the disputed domain name in June 2010, on behalf of Immerse!, LLC. The company is devoted to the business of websites specializing in horse racing. The company’s main website is <horseracingnation.com>, and it also operates <racedaytips.com>.

Mr. Midland claims to have registered the disputed domain to host a site providing tips for horse races at Churchill Downs, a world-famous race track. To that end, Mr. Midland also registered several other similarly-named domains prior to the complaint, including <saratogatips.com>, <belmonttips.com>, <keenelandtips.com>, <delmartips.com>, <racedaytips.com>, and <longshottips.com>.

Before the complaint was filed, Churchill attempted to reach out to Mr. Midland with several letters. However, Mr. Midland was unresponsive. He did, however, file a response to the complaint.

Procedural Issues

Churchill filed additional submissions. Though Panels often address why they will or will not allow supplemental submissions, this Panel accepts them without question or comment.

Identity or Confusing Similarity

The Panel finds Churchill’s registrations give it rights in the mark CHURCHILL. Accordingly:

It is clear for this Panel that the fact that the disputed domain adds the generic term “tips” to Complainant’s trademark, does not prevent the Domain Name <churchilltips.com> from being confusingly similar to the CHURCHILL trademark.

Rights or Legitimate Interests

Mr. Midland claims to have registered the disputed domain name as part of its business running websites specializing in horse racing. The Panel decides to look into this claim a bit more closely. First, the Panel finds that Mr. Midland is the owner of <horseracingnation.com>, a site devoted to horse racing. However, according to the Panelist, that site is not dedicated to betting tips. “In fact, by searching for the “tips” expression into the search menu of the mentioned domain, the only results that arise are horse names, as Dances for Tips, A Little Tipsy and Tipsy Girl among others.” [Whatever happened to wholesome horse names, like Mr. Ed?]

The Panel also visits <saratogatips.com> and <belmonttips.com>, and reports that they return pages of sponsored links relating to horse activities.

The disputed domain itself features links to Churchill’s insurance competitors, meaning the site is not a bona fide offering of goods and services. Furthermore, Mr. Midland does not satisfy Paragraph 4(c)(ii) of the Policy because he is not known by the name “Churchill Tips.” [Though that would be a cool nickname, especially if he were a billiards player.]

For all of these reasons, the Panel finds that Mr. Midland does not have rights or legitimate interests.

Bad Faith

Mr. Midland’s use of the disputed domain name to provide links to Churchill’s competitors is considered evidence of bad faith by the Panel, as is his failure to respond to Churchill’s cease-and-desist letters. Furthermore:

It is also clear to this Panel that Respondent had knowledge about Claimant’s trademark and activity. Otherwise, it is hard to understand why all the links provided though the Disputed Domain, are related to Complainant’s activity.

The Panel questions why, if Mr. Midland had really intended to use the disputed domain to provide links on horse races at Churchill Downs, he did not register <churchilldownstips.com>, which is available. [Maybe because it’s longer, and looks like “Churchill Down Stips”?]

For these reasons, the Panel finds that Churchill has proven bad faith registration and use.

Decision

The Panel orders that the requested relief be GRANTED.

Commentary

This was a pretty convoluted decision in general. At any rate, I have a problem with the idea that “tips” is generic under the first prong. (Note that this is a different concept of genericness than the one used in trademark law.) Most decisions discussing the addition of a generic word to a known mark involve truly generic words like “usa,” “info,”web”, etc. The word “tips”, on the other hand, might actually clue people in that they are going to see something related to Churchill Downs and horse betting, as opposed to something related to the insurance company.

Another thing I found interesting was the Panel’s reasoning that Mr. Midland must have known about Churchill because of all of the links on the disputed domain to competitors of Churchill. However, the registrar or other entity hosting the links page probably chooses the links based on some automatic algorithm unless it is told otherwise. The links to the competitors probably showed up because Mr. Midland didn’t know to specially exclude them, not because he specifically chose to include them.

This is a good reminder that hosting a links page can be very dangerous unless you ensure you are not providing links to the competitors of anyone who might file a UDRP complaint.

Epilogue

<churchilltips.com> still points to a site that hosts links to Churchill’s competitors.

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