Endurance Specialty Holdings
Ltd. v.
Claim Number: FA0710001103617
PARTIES
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 <endurancespecialty.com>, registered
with Compana,
LLC.
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
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 November 6, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <endurancespecialty.com> domain name
is registered with Compana, LLC and that
the Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
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 9, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 29, 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@endurancespecialty.com
by e-mail.
A timely Response was received and determined to be complete on November 29, 2007.
Complainant filed an additional submission on December 5, 2007.
Respondent filed an additional submission on December 11, 2007.
On December 12, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. The <endurancespecialty.com>
domain name is identical or at least confusingly similar to Complainant's mark.
2. Respondent has no rights or legitimate interest
in the <endurancespecialty.com>
domain name.
3. Respondent has registered and used the <endurancespecialty.com>
domain name in bad faith.
B. Respondent
Respondent requests the Panel to deny Complainant’s request on the
grounds that the <endurancespecialty.com>
domain name is not identical,
that he has a legitimate interest in the domain name and that Respondent did
not act in bad faith.
FINDINGS
1. Complainant has continuously used
the marks ENDURANCE, ENDURANCE SPECIALTY, ENDURANCE SPECIALTY INSURANCE LTD.
and ENDURANCE SPECIALTY HOLDINGS LTD. in the
insurance industry since at least as early as December, 2001.
Complainant and its marks have
acquired significant goodwill and became well-known as ENDURANCE SPECIALTY in
the insurance industry in connection with Complainant’s insurance services.
Complaint
further filed several
trademark applications for
registration in the U.S. Patent and Trademark Office (PTO). Complainant indeed is the owner of U.S. Trademark Application
Nos. 77/248,648 and 77/248,650 for ENDURANCE SPECIALTY HOLDINGS INC. and ENDURANCE, respectively.
2. Respondent, who has a long history of electronically
registering domain names and who heard at several occasions that the
registering and use of a domain name
was considered to be done in bad faith, contends that Complainant has no
rights, common law or otherwise, in its
marks. Respondent argues that Complainant should have filed a trademark
application for ENDURANCE SPECIALTY. At the same time, Respondent contends that the disputed domain is
made up of "two common dictionary words"
and therefore not subject to protection.
Respondent is using the domain name to operate a website featuring links
to third party websites that offer
products and services which compete directly with Complainant. The use of the
domain name generates “click through”
advertising revenues.
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.
1. Because Complainant does not own a trademark registration, it must establish common law rights to the trademark ENDURANCE SPECIALTY by showing either that the mark is inherently distinctive or that it has acquired secondary meaning through which the relevant public associates Complainant as the source of a product or service.
Complainant asserts that it has continuously used, and that secondary
meaning has been established in, the ENDURANCE SPECIALTY mark. Complainant has conducted a business under the
ENDURANCE SPECIALTY mark over the last six years.
Complainant’s mark has been used by various websites providing
information on Complainant’s specialty lines company “Endurance Specialty
Insurance Ltd.” The company provides
world-wide property, catastrophe and aerospace reinsurance. Complainant also provides health insurance in
the
Complainant and its subsidiaries are also referred to in the press and
many articles from such sources as MSN Money, the Motley Fool, Morningstar,
Forbes.com and The Wall Street Journal as ENDURANCE SPECIALTY.
As a result of all of the aforementioned, the Panel finds that pursuant
to Policy ¶ 4(a)(i), Complainant has established
common-law rights in the ENDURANCE SPECIALTY mark. See S.A. Bendheim Co., Inc. v.
Hollander Glass, FA
142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the
complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding
that the complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark).
2. Complainant contends that the <endurancespecialty.com> domain name is identical to Complainant’s ENDURANCE SPECIALTY mark. Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” and the absence of the space between “ENDURANCE” and “SPECIALTY” do not distinguish the disputed domain name.
The Panel finds that the disputed
domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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.”); see
also
1. Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under UDRP ¶ 4(a)(ii) before the
burden shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent is not commonly known by the disputed domain name because this is not indicated in Respondent’s WHOIS information or anywhere else in the record, and Respondent cannot present evidence that it has been commonly known by the disputed domain name. Moreover, Complainant asserts that the ENDURANCE SPECIALTY mark has been used since at least as early as December 2001, and that its use demonstrates exclusive use, creating a presumption that Respondent has no rights or legitimate interests in the <endurancespecialty.com> domain name because Respondent is not commonly known by the disputed domain name.
2. The Panel finds that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly
known by the domain name prior to registration of the domain name to
prevail"); see also Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark).
3. The Panel finds that Respondent
is not using or has not made demonstrable preparations to use the <endurancespecialty.com> domain name in connection with either
a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair way
pursuant to Policy ¶ 4(c)(iii), since the disputed domain name contains
Complainant’s mark in its entirety and resolves to a website that features
links and pop-up advertisements for third-party websites that offer products
and services which compete directly with Complainant. See eBay
Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
respondent’s use of the complainant’s entire mark in domain names makes it
difficult to infer a legitimate use); see
also Wells Fargo & Co. v. Party
Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of
Complainant’s WELLS FARGO mark to divert Internet users to websites featuring
pop-up advertisements” was not a bona
fide offering of goods or services); see
also 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 Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain
name to maintain a commercial website with links to the products and services
of the complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
4. Complainant also suggests that
Respondent is presumably receiving referral or “click-through” fees for each
Internet user who views an ad or website that resolves from one of the links on
Respondent’s website. The Panel finds
this to serve as additional evidence that Respondent does not have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona
fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat.
Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed
domain name to redirect Internet users to commercial websites, unrelated to the
complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name).
1. Complainant asserts that over
thirty-five UDRP complainants have been filed against Respondent with the
National Arbitration Forum in the last year, thirty-three of which have
resulted in a transfer from Respondent of over forty different disputed domain
names. See, e.g., Outdoor Cap Co.,
Inc. v.
Moreover, Complainant argues that Respondent registered and is using the disputed domain name in bad faith because it is generating income from “click-through” advertising revenue. Complainant contends that it can be presumed that Respondent receives monetary compensation for every misdirected Internet users.
As such, the Panel finds that Respondent
registered and is using in bad faith the disputed domain name pursuant to
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 Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
2. Respondent had at a minimum
constructive knowledge of Complainant’s ENDURANCE SPECIALTY mark at the time
the disputed domain name was registered and this therefore suggests further
Respondent’s bad faith registration and use thereof. Respondent’s website contains links to
Complainant, and an Internet search of ENDURANCE SPECIALTY at any time before
Respondent’s registration of the disputed domain name would have returned
responses demonstrating Complainant’s ongoing business. As a result, the Panel finds that Respondent
is assumed to have registered and be using the disputed domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <endurancespecialty.com> domain name
be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: December 27, 2007
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