Endurance Specialty Holdings Ltd. v. Marketing Total S.A.
Claim Number: FA0710001103590
Complainant is Endurance Specialty Holdings Ltd. (“Complainant”), represented by David
M. Perry, of Blank Rome LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <endurancereinsurance.com>, registered with Capitoldomains, LLC.
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 October 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2007.
On October 29, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <endurancereinsurance.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 November 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 21, 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@endurancereinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 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 <endurancereinsurance.com> domain name is identical to Complainant’s ENDURANCE REINSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <endurancereinsurance.com> domain name.
3. Respondent registered and used the <endurancereinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Endurance Specialty Holdings, Ltd, has continuously used the ENDURANCE REINSURANCE mark since December 2002 in the insurance industry in connection with Complainant’s reinsurance business. Complainant has conducted billions of dollars in insurance business under its mark and is cited in numerous Internet articles and listings that advertise, promote and/or discuss Complainant by using the ENDURANCE REINSURANCE mark. The ENDURANCE REINSURANCE mark is also used in regular publications of Complainant providing information to clients and employees.
Respondent’s <endurancereinsurance.com> domain name was registered on October 16, 2006 and resolves to a commercial search engine, pop-up advertisements and a series of sponsored links that direct Internet users to various third-parties, many of whom offer insurance services in direct competition with those offered under Complainant’s mark. Further, at least twelve complaints have been filed in the last year against Respondent through the National Arbitration Forum, eleven of which have resulted in the transfer of a disputed domain name from Respondent. See, e.g., Questar Corp. v. Marketing Total S.A., FA 819504 (Nat. Arb. Forum Nov. 21, 2006); Enterprise Rent-A-Car Co. v. Marketing Total S.A., FA 843582 (Nat. Arb. Forum, Dec. 29, 2006); Bealls, Inc. v. Marketing Total S.A., FA 882153 (Nat. Arb. Forum, Feb. 21, 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. 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 need not have registered its mark with a
governmental authority, so long as it can establish continued use and secondary
meaning in its mark. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established).
Complainant has continuously used since December 2002 the
ENDURANCE REINSURANCE mark in the insurance industry in connection with its
reinsurance business. Complainant has
conducted billions of dollars in insurance business under its mark and is cited
in numerous Internet articles and listings that advertise, promote and/or
discuss Complainant by using the ENDURANCE REINSURANCE mark. The ENDURANCE REINSURANCE mark is also used
in regular publications of Complainant providing information to clients and
employees. The Panel finds that
Complainant has established common-law rights in the ENDRUANCE REINSURANCE mark
through continued use and demonstrated secondary meaning pursuant to Policy ¶
4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of [KEPPEL BANK] in connection with
its banking business, it has acquired rights under the common law.”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000)
(finding that the complainant has common law rights in BROADCASTAMERICA.COM,
given extensive use of that mark to identify the complainant as the source of
broadcast services over the Internet, and evidence that there is wide
recognition with the BROADCASTAMERICA.COM mark among Internet users as to the
source of broadcast services).
Respondent’s <endurancereinsurance.com> domain
name contains Complainant’s ENDURANCE REINSURANCE mark in its entirety,
omitting the space, and adding the generic top-level domain (“gTLD”)
“.com.” It is well-established that the
omission of a space and inclusion of gTLD are irrelevant in a Policy ¶ 4(a)(i) analysis. As a
result, the Panel finds that Respondent’s disputed domain name is identical to
Complainant’s mark. See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain name. See VeriSign
Inc. v. VeneSign
No response has been filed in this case. Therefore, the Panel presumes that Respondent
has no rights or legitimate interests in the <endurancereinsurance.com>
domain name but will still nontheless examine the record in consideration of
the factors listed under Policy ¶ 4(c). See
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).”); see also BIC Deutschland GmbH
& Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting
a response, Respondent has failed to invoke any circumstance which could
demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate
interests in the domain name”).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent is or ever was commonly known by
the disputed domain name. The Panel
finds that absent any evidence to the contrary Respondent is not commonly known
by the <endurancereinsurance.com> domain name pursuant to Policy ¶
4(c)(ii). See Brown v. Sarrault,
FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”); see also 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).
The <endurancereinsurance.com> domain name
resolves to a commercial search engine, pop-up advertisements, and a series of
sponsored hyperlinks, which if clicked upon redirect Internet users to various
third-parties, many of whom offer insurance services in direct competition with
those offered under Complainant’s ENDURANCE REINSURANCE mark. The Panel finds that this does not constitute
a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate 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
Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
At least twelve complaints have been filed in the last year
against Respondent through the National Arbitration Forum, eleven of which have
resulted in the transfer of a disputed domain name from Respondent. See,
e.g., Questar Corp. v. Marketing Total
S.A., FA 819504 (Nat. Arb. Forum Nov. 21, 2006); Enterprise Rent-A-Car Co. v. Marketing Total
S.A., FA 843582 (Nat. Arb. Forum, Dec. 29, 2006); Bealls, Inc. v. Marketing Total S.A., FA
882153 (Nat. Arb. Forum, Feb. 21, 2007). The Panel finds this sufficient to establish a
pattern of registering infringing domain names and a finding that Respondent
has then registered and is using the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(i).
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 Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent
has a history of registering domain names that infringe on other trademark
holders' rights; therefore, Respondent's registration and use of the
<yourbigbackyard.com> domain name constitutes bad faith pursuant to
Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR
BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”).
Further, Respondent’s <endurancereinsurance.com> domain name resolves to a website featuring a list of sponsored links to third-parties, many of whom offer insurance services in direct competition with those offered under Complainant’s mark. The Panel finds this to be additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (Respondent registered a domain name that diverted Internet users to the complainant’s competitor's websites. The Panel stated that as a result it was “a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Lastly, the <endurancereinsurance.com> domain name is presumed to financially benefit Respondent through the use of ‘click-through’ fees for every Internet user who clicks or views Respondent’s commercial search engine, pop-up advertisements, and sponsored hyperlinks to third-party competitors of Complainant. The Panel finds this to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to pop-up advertisements constituted bad faith use of the domain name); see also 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.’”)
The Panel concludes that Complainant has 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 <endurancereinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 12, 2007
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