INSUBUY, Inc. v. Zahid Reza
Claim Number: FA0709001073956
PARTIES
Complainant is INSUBUY, Inc. (“Complainant”), represented by Narendra
Khatri, 3105 Broken Bow Way, Suite 100, Plano, TX 75093. Respondent is Zahid Reza (“Respondent”), 9704 Legend Trail,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <getamericaninsurance.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On September 4, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <getamericaninsurance.com>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that the Respondent is the
current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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 September 14, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 4, 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 postmaster@getamericaninsurance.com
by e-mail.
A timely Response was received and determined to be complete on September 27, 2007.
Both parties filed Additional Submissions which were received in a timely
manner.
On October 9, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts rights in the trademark
BUY AMERICAN INSURANCE and alleges that the disputed domain name is confusingly
similar to the trademark.
Complainant does not address the issue of
whether or not Respondent has rights or legitimate interests in the disputed
domain name.
Complainant alleges that it engaged Respondent
to provide tax advice and provided sensitive business information to
Respondent. Complainant alleges
Respondent abused that position and used confidential information to establish
a competitive business under a confusingly similar name.
B. Respondent
Respondent broadly denies Complainant’s allegations.
C. Additional Submissions
The Panel has read and considered these submissions but for the reasons
set out below it does not consider that they advance either party’s position.
FINDINGS
1. Complainant
is in the business of providing travel and medical insurance under the domain
name <buyamericaninsurance.com>.
2. Respondent
is a chartered practicing accountant and licensed insurance agent.
3. Complainant
engaged Respondent to provide tax advice for Complainant.
4. Respondent
subsequently registered the disputed domain name and developed a similar
business to that of Complainant.
5. Respondent
uses the disputed domain name in connection with that business.
6. Respondent
offered to transfer the disputed domain name to Complainant for adequate
financial compensation.
7. The
parties failed to reach agreement.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel is of the opinion that there is an important preliminary question as to whether this dispute falls outside the scope of the Policy. This issue has been examined by panelists in a number of earlier disputes. In the case of First Nationwide Exchange, Inc. v. Reskyu, FA 956937 (Nat. Arb. Forum May 24, 2007), the panel noted that “[i]n 1999, the World Intellectual Property Organisation (“WIPO”) produced a report in which it noted that good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the UDRP.” In Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000), the panel held that a dispute concerning an employee’s registration of a domain name in his own name and his subsequent refusal to transfer it to his employer raised issues of breach of contract and breach of fiduciary duty that were more appropriately resolved in court, not before a UDRP panel. In Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) the panel refused to transfer the domain name, stating that the Policy did not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.”
The Panel here notes other similar decisions. See,
for example, Everingham Bros. Bait Co. v.
Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds
that this matter is outside the scope of the Policy because it involves a
business dispute between two parties. The UDRP was implemented to address
abusive cybersquatting, not contractual or legitimate business disputes.”); Fuze
Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007)
(“The Complaint before us describes what appears to be a common-form claim of
breach of contract or breach of fiduciary duty. It is not the kind of
controversy, grounded exclusively in abusive cyber-squatting, that the Policy
was designed to address.”); Frazier Winery LLC v. Hernandez, FA 841081
(Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a
business relationship between the complainant and respondent regarding control
over the domain name registration are outside the scope of the UDRP Policy);
see also Discover New England v.
Avanti Group, Inc., FA
123886 (Nat. Arb. Forum Nov. 6, 2002; Luvilon Industries NV v. Top Serve
Tennis Pty Ltd., DAU2005-0004
(WIPO Sept. 6, 2005); Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007).
On the other hand, it was said in
the case of Draw-Tite, Inc. v.
This
Panel well recognizes that its jurisdiction is limited to providing a remedy in
cases of “the abusive registration of domain names,” or
“Cybersquatting.” . . . Like any other tribunal, however,
this Panel can determine whether it has jurisdiction only from the facts and
arguments presented to it. In this case,
Complainant did allege bad-faith use and registration of the domain name at
issue. Had Complainant proved those
allegations, there would be no proper question as to this Panel’s jurisdiction.
Weighing these authorities against the present case, a number of observations can be made. Neither party has shown particular concern for the Policy or what it requires to be shown. Complainant, for example, makes no attempt at all to address Paragraph 4(a)(ii) of the Policy. The Panel considers that there would be ample weight in prior UDRP decisions to justify a ruling that the matter was properly one for another forum. Nonetheless, Complainant has stated its claim to trademark rights and has given details of its US Federal trademark registration. It has expanded on its claim of bad faith use and registration of the disputed domain name by Respondent and Respondent has joined in that debate. Moreover, the Complaint might be fairly construed as carrying the assumption that Complainant believes Respondent has no rights or legitimate interests in the disputed domain name and certainly the Response and later Additional Submissions touch on that argument.
On balance, the
Panel is narrowly of the view that the dispute has sufficient connection,
either by way of the parties’ submissions or from an evidentiary standpoint, to
properly engage the Policy.
Complainant must satisfy a threshold
issue that it has rights in a trademark.
The rights can arise from registration (see Reebok Int’l Ltd. v.
Complainant refers to a pending
trademark application in
Complainant states that it was
‘formerly known as Ace Objects, Inc.” but provides no evidence of a change of
name. In those circumstances, the Panel
would be entitled to disregard the
The trademark is composed of two main elements – a device element being a stylistic representation of a human form in what might be described as a posture of celebration and positioned under an arc-like crescent, after which follows the word element of the trademark, “Buy American Insurance.com.”
The registration certificate carries an endorsement which states that “no claim is made to the exclusive right to use BUY AMERICAN INSURANCE.COM, apart from the mark as shown.” Disclaimers of that kind are a commonplace feature of the trademark registration systems of many countries (see, for example, US Federal, Lanham (Trademark) Act (15 U.S.C.), Art.1056[i] ). They serve to circumscribe the monopoly rights of the trademark owner. A statement of the kind used here has the effect of giving no rights in the words when used on their own, but only when used in combination with the trademark as a whole, in this case, with the device component.
It follows that for the purpose of the Policy, Complainant can have no better rights than those given by the trademark registration. Since the registration gives no rights in the word element of the trademark, on its own, Complainant has not established rights in a registered trademark which might be confused with the disputed domain name.
Nevertheless, Complainant asserts at various points that the trademark has been used “for several years.” Use of that kind, if proven, could give Complainant common law or unregistered trademark rights as discussed in the cases referred to above.
The
Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
any evidence indicating extensive use or that its claimed mark has achieved
secondary source identity . . . [Complainant’s claim that
it is well known] is a finding that must be supported by evidence and not
self-serving assertions.
Moreover, the phrase “buy American insurance” and so inherently descriptive that in order to support common law rights, the evidence of use and public association of that expression with Complainant would need to be highly compelling. The Panel finds no support for a claim to common law rights in the trademark.
For these reasons, the Panel finds that Complainant has failed to satisfy even the first limb of Paragraph 4(a)(i) of the Policy. Accordingly, there is no cause for the Panel to go on to consider the remaining matters which would otherwise need to be satisfied by Complainant.
No finding necessary
No finding necessary
DECISION
Having failed to establish at least one of the three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett Lyons, Panelist
Dated: October 19, 2007
[i] §1056. Disclaimer of unregistrable matter
(a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
(b) No disclaimer, including those made under subsec. (e) of section 7 of this Act [15 USC 1057(e)], shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.
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