Progressive Casualty Insurance Company v. Bill Edwards
Claim Number: FA0709001081531
Complainant is Progressive Casualty Insurance Company (“Complainant”), represented by Eric
J. Steiner, of Progressive Casualty Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <progressiveinsuranceagent.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2007.
On September 25, 2007, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <progressiveinsuranceagent.com> domain name is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com 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 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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@progressiveinsuranceagent.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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:
1. Respondent’s <progressiveinsuranceagent.com> domain name is confusingly similar to Complainant’s PROGRESSIVE mark.
2. Respondent does not have any rights or legitimate interests in the <progressiveinsuranceagent.com> domain name.
3. Respondent registered and used the <progressiveinsuranceagent.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Progressive Casualty Insurance Company, is an insurance company which offers coverage for private and commercial auto, motorcycle, boat, and recreational vehicles. Complainant is a leader in website services, being the first insurance company to run a website, offer on-line quotes, and permit customers to purchase auto insurance in real time. Complainant holds a trademark registration for the PROGRESSIVE trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,844,695 issued July 12, 1994). Complainant also holds trademark registrations for several variations of the PROGRESSIVE trademark.
Respondent registered the <progressiveinsuranceagent.com> domain name on January 16, 2007. Respondent’s disputed domain name resolves to a website that provides links to other companies that are in direct competition with Complainant. Additionally, Respondent has been the respondent in several other UDRP proceedings in which disputed domain names have been transferred from the Respondent to the respective complainants. See Yahoo! Inc. v. Edwards, FA 535429 (Nat. Arb. Forum Sept. 26, 2005); see also State Farm Mutual Auto. Ins. Co. v. Edwards, FA 787165 (Nat. Arb. Forum Oct. 17, 2006); see also Ares Trading S.A. v. Edwards, D2005-0189 (WIPO June 24, 2005); see also Sports Holdings, Inc. v. Edwards, D2006-1148 (WIPO Nov. 10, 2006).
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 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.
Complainant has shown trademark registration information for
the PROGRESSIVE trademark with the USPTO. The Panel finds that this registration
establishes Complainant’s rights pursuant to 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.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive.").
Respondent’s <progressiveinsuranceagent.com> domain name is confusingly similar to Complainant’s PROGRESSIVE trademark as it includes the entire mark along with words descriptive of Complainant’s business. The addition of these words does not negate the confusion over the connection of the disputed domain name with Complainant’s business. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Respondent’s <progressiveinsuranceagent.com> domain name also adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is not relevant in a Policy ¶ 4(a)(i) analysis. The Panel finds that the <progressiveinsuranceagent.com> domain name is confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i). See 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <progressiveinsuranceagent.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy ¶ 4(a)(ii). Once Complainant has shown a prima facie case, the burden of proof shifts to Respondent. The Panel finds Complainant has met its burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint allows the Panel to assume the Respondent has no rights or 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, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nonetheless, the Panel will examine the record to determine legitimate rights or interests under Policy ¶ 4(a)(ii).
Respondent’s WHOIS information does not suggest that
Respondent is commonly known by the <progressiveinsuranceagent.com>
domain name. There is no other
information that supports that premise. Complainant
has asserted that Respondent is not licensed or otherwise authorized to use the
PROGRESSIVE trademark for any purpose. Therefore, the Panel finds that Respondent
is not commonly known by the disputed domain name under Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Respondent’s disputed domain name resolves to a website that provides links and keyword advertisements of other companies that are in direct competition with Complainant. The Panel presumes that Respondent is using the domain name for monetary gain, by capitalizing on Complainant’s mark. The Panel finds this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s disputed domain name is being used in bad faith. The disputed domain name directs to a website that provides links of Complainant’s business competitors. The Panel believes this disputed domain name is used for monetary gain by the Respondent by receiving click-through fees and capitalizing on Complainant’s reputation. Such use is evidence of bad faith registration and use under 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 TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Additionally, Respondent has been the respondent in several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings. See Yahoo! Inc. v. Edwards, FA 535429 (Nat. Arb. Forum Sept. 26, 2005); see also State Farm Mutual Auto. Ins. Co. v. Edwards, FA 787165 (Nat. Arb. Forum Oct. 17, 2006); see also Ares Trading S.A. v. Edwards, D2005-0189 (WIPO June 24, 2005); see also Sports Holdings, Inc. v. Edwards, D2006-1148 (WIPO Nov. 10, 2006). Therefore, the Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); 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).
The Panel finds that 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 <progressiveinsuranceagent.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 6, 2007
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