Assurant, Inc. v. Hank Hawes
Claim Number: FA0709001081179
Complainant is Assurant, Inc. (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP, Bank of America
Plaza,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <assurantsolutions.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2007.
On September 23, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <assurantsolutions.net> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that 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 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 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@assurantsolutions.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a well-known provider of insurance and financial services.
For several years, Complainant and its affiliates have extensively used the ASSURANT mark to promote their services.
Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT mark (Reg. No. 2,543,367, issued February 26, 2002).
Respondent is not authorized to use Complainant’s ASSURANT mark.
Respondent registered the <assurantsolutions.net> domain name on November 9, 2006.
Respondent has not made active use of the disputed domain name since it was registered.
Respondent’s <assurantsolutions.net> domain name is confusingly similar to Complainant’s ASSURANT mark.
Respondent does not have any rights or legitimate interests in the domain name <assurantsolutions.net>.
Respondent registered and used the <assurantsolutions.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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. The 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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant’s registration of the ASSURANT service mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
Respondent’s <assurantsolutions.net> domain confusingly similar to Complainant’s ASSURANT service mark pursuant to Policy ¶ 4(a)(i) inasmuch as it incorporates Complainant’s mark in its entirety and merely adds the generic term “solutions.” See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions”). The inclusion of the generic top-level domain “.net” to the disputed domain name is irrelevant, because a top-level domain is a required element of all domain names. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the contested <assurantsolutions.net> domain name. Under Policy ¶ 4(a)(ii), once Complainant has made out a prima facie case to this effect, the burden shifts to Respondent to show that it nonetheless does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has made out a prima facie case under the Policy, and Respondent’s failure to
answer the Complaint allows us to presume that Respondent lacks rights and
legitimate interests in the disputed domain name. See Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on
Respondent's failure to respond [to the complaint], it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.
To the same effect, see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000). Nevertheless, we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in its domain name under Policy ¶ 4(c).
We first note in this connection that nothing in the
evidence, including the WHOIS information, suggests that Respondent is commonly
known by the domain name <assurantsolutions.net>. According to Complainant, Respondent is not
authorized to use the ASSURANT mark. Respondent
does not dispute this assertion. Therefore, we conclude that Respondent is not
commonly known by the <assurantsolutions.net>
domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) a respondent is not a licensee of a
complainant; (2) that complainant’s prior rights in the domain name in issue precede
that respondent’s domain name registration; (3) that respondent is not commonly
known by the domain name in question); see also Wells Fargo &
Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
According to the undisputed evidence in the record before us, the contested domain name resolves to a website that has no active use. We conclude therefore that there is no bona fide offering of goods and services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003): “Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.” See also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding no rights or legitimate interests where a respondent fails to use disputed domain names in any way).
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and failure to make active use of the <assurantsolutions.net> domain name, together with its failure to provide evidence showing preparations to use the disputed domain name is evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name or website that connects with the domain name, and that a failure to make active use of a domain name permits an inference of registration and use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that a respondent’s failure to develop its website in a two-year period raises the inference of registration in bad faith).
In addition, it appears that Respondent registered the <assurantsolutions.net> domain name with at least constructive knowledge of
Complainant’s rights in the ASSURANT service mark by virtue of Complainant’s prior registration of
that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <assurantsolutions.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 5, 2007
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