James Cochran v. Patrick Thompson
Claim Number: FA0710001094647
Complainant is James Cochran (“Complainant”), represented by Christopher
W. Schneider of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techinsurancepolicy.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 17, 2007; the National Arbitration Forum received a hard copy of the Complaint October 17, 2007.
On October 18, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <techinsurancepolicy.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 verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 14, 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.
The Forum received a timely Response and determined it to be complete November 19, 2007.
On November 17, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this dispute:
1. The disputed domain name that Respondent registered, <techinsurancepolicy.com>, is identical to or confusingly similar to a mark in which Complainant has rights.
2. Respondents has no rights to or legitimate interests in the <techinsurancepolicy.com> domain name.
3. Respondent registered and used the <techinsurancepolicy.com> domain name in bad faith.
B. Respondent asserted the following points in response:
1. Respondent does not address whether or not the domain name is identical to or confusingly similar to a mark in which Complainant has rights.
2. Respondent urges that the domain named combines generic words that cannot be registered to any one entity.
3. Respondent did not act in bad faith since he had no knowledge of Complainant’s use of the mark prior to registering the domain name.
4. Respondent has not used the site in a manner that causes confusion with Complainant and did not intend to limit Complainant’s ability to do business over the Internet.
5. The Complainant and Respondent are not competitors and selling technical insurance is not a complex endeavor.
Complainant has rights in a protected mark, TECHINSURANCE, which was registered with the United States Patent and Trademark Office (USPTO) July 4, 2000 (Reg. No. 2,364,402).
Complainant began using the TECHINSURANCE mark February 1, 1997, in the field of providing commercial property and liability, life, health and disability insurance.
Complainant amended the mark February 1, 2007.
Complainant’s TECHINSURANCE business operates in the State of
Respondent registered the <techinsurancepolicy.com> domain name December 7, 2006.
Respondent is licensed to sell insurance in several states.
Complainant sent a cease and desist letter to Respondent July 26, 2007, noting that Respondent’s website at that time noted formation of a technical insurance division in 2003.
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 Complainant to 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) 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 established rights in the TECHINSURANCE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). 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.").
Complainant contends that Respondent’s <techinsurancepolicy.com> domain name is confusingly similar to Complainant’s TECHINSURANCE mark because Respondent’s disputed domain name uses the Complainant’s mark in its entirety and simply adds the descriptive term “policy.” The domain name is confusingly similar to Complainant’s mark because this minor addition does not overcome the confusingly similar characteristics to Complainant’s mark under Policy ¶ 4(a)(i). Moreover, the Panel find that Respondent’s addition of the generic top-level domain also fails to sufficiently distinguish the disputed domain name under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Respondent does not dispute Complainant’s assertions with respect to this element of the Policy.
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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).
Complainant contends that Respondent is not commonly known by the <techinsurancepolicy.com> domain name. The Panel finds that Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <techinsurancepolicy.com> domain name. Moreover, Complainant has asserted that Respondent is not licensed or otherwise authorized to use the TECHINSURANCE mark 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 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).
Furthermore, Complainant contends that Respondent is using the <techinsurancepolicy.com> domain name to operate a website providing products and services that seek to compete directly with Complainant’s own insurance services. Respondent’s use of a domain name confusingly similar to Complainant’s established mark for the purposes of operating a website selling competing products and services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent contends that it is using the <techinsurancepolicy.com>
domain name in connection with its commercial insurance business. Respondent is licensed to sell insurance in
eight states in the
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant contends that
Respondent is using the <techinsurancepolicy.com>
domain name in connection with Respondent’s own competing insurance business.
Respondent’s use of Complainant’s protected mark in the disputed <techinsurancepolicy.com>
domain name for the purpose of selling competing goods or services is likely to
cause confusion as to Complainant’s sponsorship of or affiliation with the
resulting website. Further, Respondent may not opportunistically capitalize on
another’s confusion as to Complainant’s association with the website in order
to make commercial gain for Respondent.
Such use supports findings of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s <techinsurancepolicy.com> domain name resolves to a website that seeks to compete directly with Complainant’s services sold under the TECHINSURANCE mark. Moreover, Complainant asserts that Respondent is a competitor of Complainant in a highly specialized field. Respondent contends that the sale of technical insurance is not complex; but this avoids the real issue. Respondent’s use of the Complainant’s protected mark in the <techinsurancepolicy.com> domain name is calculated to disrupt Complainant’s business and this supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Again Respondent contends that it registered the <techinsurancepolicy.com> domain name for use in connection with its own commercial insurance services and that the words contained within the domain name are generic. Given the Panel’s findings above on Complainant’s rights in the protected mark, this argument fails.
The Panel finds that Complainant satisfied ICANN 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 <techinsurancepolicy.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Dated: December 3, 2007.
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