Liberty Mutual Insurance Company v. Bin g Glu c/o G Design no sale - building
Claim Number: FA0707001036129
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Christopher
Sloan, of Liberty Mutual Insurance Company,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <libertymutuals.com>, registered with Communigal Communications Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2007.
On July 16, 2007, Communigal Communications Ltd. confirmed by e-mail to the National Arbitration Forum that the <libertymutuals.com> domain name is registered with Communigal Communications Ltd. and that Respondent is the current registrant of the name. Communigal Communications Ltd. has verified that Respondent is bound by the Communigal Communications Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
The term “
used the name '
The Liberty Mutual trademarks are listed on the Principal Register of the United States Patent and Trademark Office, Registration No. 1405249 (August 12, 1986) and Registration No.2734195 (July 8, 2003) under International Class Code 036 for financial services.
In addition to its
· European Community Trademarks (Reg. No. 1743855, Feb. 19, 2003 & Reg. No. 3441524, Aug. 30, 2005)
[5.] FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] Respondent’s domain name listed in 4[a] above is confusingly similar to several pre-existing Liberty Mutual trademarks identified in 4[c] above and to Liberty Mutual’s primary domain names: <www.LibertyMutual.com> and <www.LibertyMutualInsurance.com>.
Respondent has simply appended the letter “s” to the word “Liberty Mutual”, making it a plural version of the pre-existing Liberty Mutual trademark. Respondent’s use of the Liberty Mutual trademark in conjunction with this typographical error deceptively suggests that Respondent is authorized to offer or solicit Liberty Mutual insurance products and services. The Respondent is not a licensed insurance agent, broker, claims representative, or authorized representative of Liberty Mutual (as required by state insurance laws) and has no license, grant or authority to solicit, sell or service Liberty Mutual insurance products or services or use the Liberty Mutual trademark in commerce.
The Liberty Mutual name, trademark and logo are frequently
seen in the national and local media on a weekly basis and the company spends
considerable amounts of time, money and effort advertising in multiple media
outlets (TV, radio, Internet, newspaper and magazine ads, and sponsorships). Nationally recognized and advertised
sponsorships include The Liberty Mutual Legends of Golf, The
Liberty Mutual Coach of the Year, The American Experience on Public
Television, Students Against Destructive Decisions (“SADD”), the Big
Ten Conference, and the Rose Bowl Stadium. Virtually all Internet searches on the name
Liberty Mutual has used the term “Liberty Mutual” continuously in commerce for ninety (90) years, has owned the federally registered trademark since 1986 and has operated the websites <www.LibertyMutual.com> and <www.LibertyMutualInsurance.com>, since 1996. Respondent’s domain registration in 2004 means Respondent was aware, or should have been aware with minimal effort and due diligence, of the numerous pre-existing Liberty Mutual trademarks, domain names and websites.
[b.] Respondent does not have any rights or legitimate interests with respect to the domain name since Respondent has never been known as, nor is Respondent currently known as, “Liberty Mutual”. Respondent is not making any legitimate noncommercial or fair use of the domain name, instead, Respondent is using common typographic error of “Liberty Mutual” as a domain name and using the corresponding website to mislead and divert consumers who are seeking Liberty Mutual products and services.
[c.] Respondent’s registration of this domain name is in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent also uses the Liberty Mutual trademark directly in its website taking further unfair advantage of the confusion created by the typographic error for commercial gain. Respondent’s unauthorized use of the Liberty Mutual trademark diminishes the trademark as the source identifier for Liberty Mutual products and services. Respondent’s website has also been identified as “Pay-per-Click” site meaning it is likely Respondent receives “click-thru” fees for redirecting Internet users from Respondent’s website to third party websites which compete with Liberty Mutual for insurance quotes.
Respondent has registered in excess of 1700 domain names and has used a similar cybersquatting and typosquatting tactics against several other well known brand names including:
· AccuWeather - (www.AccuWeathers.com)
· Verizon Communications - (www.VirizenWirless.com)
· Pizza Hut Restaurants - (www.PizzaHHut.com)
· Nordstrom - (www.Nordstrmo.com )
Respondent has been the subject of at least four (4) UDRP cases of which all resulted in orders to transfer the domain names to the Complaints including:
· Hewlett-Packard Company (www.snapfihs.com - NAF Case No. 714965, decided 6/30/06)
· Metropolitan Life Insurance Company (www.metllife.com and www.mettlife.com - NAF Case No. 874496, decided 5/15/07)
· PepsiCo, Inc. (www.PepsiRewards.com - WIPO Case D2007-0490, decided 6/707)
· VeriSign, Inc. (www.veri-sign.com – WIPO Case D2007-0421, decided 5/28/07)
B. Respondent failed to submit a Response in this proceeding.
Complainant is an international multi-line insurer in the
property and casualty fields.
Complainant has continuously used the LIBERTY MUTUAL mark since 1917 in
connection with insurance and financial products and services. It has registered the mark in numerous
jurisdictions worldwide including in the
Respondent’s <libertymutuals.com> domain name resolves to website featuring links to third parties, some of whom offer services in competition with those offered under Complainant’s mark. Respondent has also been the subject of at least four other disputes before similar panels all resulting in the transfer of the domain name to a complainant. See Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v Bin g Glu, FA 714965 (Nat. Arb. Forum June 6, 2006); see also Metropolitan Life Insurance Company v Bin g Glu c/o G Design, FA 874496 (Nat. Arb. Forum May 15, 2007); see also PepsiCo, Inc. v. Bin G Glu, D2007-0490 (WIPO June 7, 2007); see also VeriSign Inc. v. Bin g Glu / G Design, D2007-0421 (WIPO May 28, 2007).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. This Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
There are only two differences between Complainant’s mark and the disputed domain name: (1) the addition of the letter “s” after the mark; and (2) the addition of the generic top-level domain (“gTLD”) “.com.” It is well-established that the addition of a gTLD is disregarded in a Policy ¶4 (a)(i) analysis. Moreover, adding the letter “s” to the end of Complainant’s mark does not render the disputed domain name sufficiently distinct under Policy ¶4(a)(i). This Panel finds the <libertymutuals.com> domain name is confusing similar to Complainant’s LIBERTY MUTUAL mark. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
This Panel concludes Complainant satisfied Policy ¶4(a)(i).
Under Policy ¶4(a)(ii), Complainant
must initially make out a prima facie
case that Respondent has no rights or legitimate interests in the domain name
at issue. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the Complaint. The Panel may therefore presume Respondent has no rights or legitimate interests in the <libertymutuals.com> domain name but will still consider all the available evidence with respect to the factors listed in Policy ¶4(c) before making this determination. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”).
Nowhere in the record, including Respondent’s WHOIS information, does it indicate Respondent is or ever has been commonly known by the <libertymutuals.com> domain name. Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, This Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent does not have a business or offer any services on the website at the disputed domain name. Respondent’s <libertymutuals.com> domain name resolves to a web page featuring links to third parties, some of whom offer products and services that compete with Complainant. This Panel finds Respondent is not using the <libertymutuals.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
This Panel concludes Complainant satisfied Policy ¶4(a)(ii).
At least four other similarly situated panels have transferred disputed domain names from Respondent to a complainant. See Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v Bin g Glu, FA 714965 (Nat. Arb. Forum June 6, 2006); see also Metropolitan Life Insurance Company v Bin g Glu c/o G Design, FA 874496 (Nat. Arb. Forum May 15, 2007); see also PepsiCo, Inc. v. Bin G Glu, D2007-0490 (WIPO June 7, 2007); see also VeriSign Inc. v. Bin g Glu / G Design, D2007-0421 (WIPO May 28, 2007). This Panel finds Respondent is engaged in a pattern of conduct for the purpose of preventing true trademark owners from reflecting their marks in a corresponding domain name and as such, Respondent has registered and is using <libertymutuals.com> in bad faith pursuant to Policy ¶4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent’s <libertymutuals.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark and resolves to a website featuring links to third parties, some of whom offer services in competition with those services offered under Complainant’s mark. This Panel finds this to be further evidence of bad faith pursuant to Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Lastly, Respondent’s website features links to third parties, some of whom are competitors of Complainant. This Panel presumes such links are financially benefiting Respondent through click-through-fees. This Panel finds this to be additional evidence of bad faith pursuant to Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
This Panel concludes Complainant satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <libertymutuals.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: September 2, 2007
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