Liberty Mutual Insurance Company v. Traverito Traverito
Claim Number: FA0712001117434
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Christopher
Sloan, of Liberty Mutual Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <peerlessinsurence.com>, <peerlessinsurnace.com> and <libertymutualinsurnace.com>, registered with Moniker.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 10, 2007.
On January 3, 2008, Moniker confirmed by e-mail to the National Arbitration Forum that the <peerlessinsurence.com>, <peerlessinsurnace.com> and <libertymutualinsurnace.com> domain names are registered with Moniker and that Respondent is the current registrant of the names. Moniker has verified that Respondent is bound by the Moniker 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 January 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2008 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@peerlessinsurence.com, postmaster@peerlessinsurnace.com and postmaster@libertymutualinsurnace.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <peerlessinsurence.com>, <peerlessinsurnace.com> and <libertymutualinsurnace.com> domain names are confusingly similar to Complainant’s LIBERTY MUTUAL and PEERLESS INSURANCE marks.
2. Respondent does not have any rights or legitimate interests in the <peerlessinsurence.com>, <peerlessinsurnace.com> and <libertymutualinsurnace.com> domain names.
3. Respondent registered and used the <peerlessinsurence.com>, <peerlessinsurnace.com> and <libertymutualinsurnace.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Liberty Mutual Insurance Company, Peerless Insurance Company and Liberty Mutual Group, collectively known as Complainant bring this Complaint. Peerless Insurance Company is a wholly-owned subsidiary of Liberty Mutual Insurance Company. Both Peerless Insurance Company and Liberty Mutual Insurance Company offer insurance-related and financial products globally as members of the Liberty Mutual Group, which is one of the largest multi-line insurers in the property and casualty field in the world. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIBERTY MUTUAL mark (i.e. Reg. No. 1,405,249 issued August 12, 1986). In addition, Complainant owns a trademark registration with the USPTO for the PEERLESS INSURANCE mark (Reg. No. 2,862,578 issued July 13, 2004).
Respondent registered the <peerlessinsurence.com> domain name on August 26, 2004, and the <peerlessinsurnace.com> and <libertymutualinsurnace.com> domain names on September 1, 2004. Respondent’s disputed domain names resolve to a website displaying links to third-party websites offering insurance products in direct competition with Complainant.
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 established rights in the LIBERTY MUTUAL and PEERLESS INSURANCE marks through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See 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."); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant to register all possible domain names that surround its substantive mark does not hinder the complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).
Complainant contends that Respondent’s <libertymutualinsurnace.com> domain name domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark. Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds a misspelled generic term associated with Complainant’s business and adds the generic top-level domain name (“gTLD”) “.com.” In Space Imaging LLC v. Brownell, the panel held that there was a confusing similarity between the complainant’s mark and the respondent’s disputed domain name where the disputed domain name contained the complainant’s mark and incorporated a generic term with an obvious relationship to the complainant’s business. AF-0298 (eResolution Sept. 22, 2000). As a result. in the instant case, the Panel finds that Respondent’s <libertymutualinsurnace.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark for purposes of Policy ¶ 4(a)(i). See 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); see also 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).
Similarly, Complainant contends that Respondent’s <peerlessinsurence.com> and <peerlessinsurnace.com> domain names are confusingly similar to Complianant’s PEERLESS INSURANCE mark. Respondent’s disputed domain names contain the dominant portions of Complainant’s mark. However, the <peerlessinsurnace.com> domain name transposes the letters “n” and “a” and adds the gTLD “.com.” The <peerlessinsurnace.com> domain name, on the other hand, contains a misspelled vaariation of the term “insurance.” The Panel holds that neither the transposing of two letters nor the misspelling of a term used in Complainant’s mark creates a meaningful distinction capable of overcoming a claim of being confusingly similar under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain names. When Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).
Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel chooses to examine the evidence for applicable Policy ¶ 4(c) elements before making a final determination with regards to Respondent’s rights and legitimate interests.
Complainant asserts that Respondent is neither commonly
known by the disputed domain names, nor licensed to register domain names using
the LIBERTY MUTUAL and PEERLESS INSURANCE marks. Respondent’s WHOIS information lacks any defining
characteristics relating it to the disputed domain name. Therefore, the Panel finds that without
affirmative evidence of being commonly known by the disputed domain
names, Respondent is not commonly known by the disputed domain names pursuant
to Policy ¶ 4(c)(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 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.”).
Complainant contends that Respondent is using the disputed domain names in order to attract unknowing Internet users to the associated website containing links to third-party websites offering insurance products in direct competition with Complainant. The Panel finds that intentionally diverting Internet users to a competing website for commercial gain by using a domain name which is confusingly similar to a complainant’s mark is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain names to directly compete with Complainant is evidence of bad faith. The Panel finds that a registered domain name used primarily to disrupt the business prospects of a competitor is a demonstration of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent’s use of the disputed domain names in order to intentionally attract
Internet users to its website by creating a strong possiblity of confusion with
Complainant’s LIBERTY MUTUAL and PEERLESS INSURANCE marks and offering
third-party links to competing websites.
The Panel infers that Respondent receives click-through fees for
diverting Internet users to such websites.
Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of
the disputed domain name constitutes bad faith registration and use. See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peerlessinsurence.com>, <peerlessinsurnace.com> and <libertymutualinsurnace.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 26, 2008
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