Dairyland Insurance Company v. International Names Ltd.
Claim Number: FA0712001125172
Complainant is Dairyland Insurance Company (“Complainant”), represented by Brad
P. Corbett, Associate
Counsel, 1800 North Point Drive, Stevens Point, WI 54481. Respondent is International Names Ltd. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dairylandauto.com>, registered with Domaindoorman, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 2, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <dairylandauto.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, 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 January 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 28, 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@dairylandauto.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <dairylandauto.com> domain name is confusingly similar to Complainant’s DAIRYLAND mark.
2. Respondent does not have any rights or legitimate interests in the <dairylandauto.com> domain name.
3. Respondent registered and used the <dairylandauto.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dairyland Insurance Company, is a provider of
insurance underwriting services, primarily automobile and motorcycle
insurance. Complainant registered the
DAIRYLAND mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <dairylandauto.com>
domain name on
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.
By registering the DAIRYLAND mark with the USPTO, Complainant has established rights in the mark under 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <dairylandauto.com> domain name combines Complainant’s DAIRYLAND mark with the generic term “auto.” When a generic term describes a complainant’s business, previous panels have found that the term does not distinguish the disputed domain name from the registered mark. In this case, Complainant’s primary business is automobile insurance, thus closely related to the generic term “auto.” Moreover, Respondent included the generic top-level domain (“gTLD”) “.com” in the disputed domain name. Because all domain names are required to have a top-level domain, the inclusion of a gTLD is inconsequential in the determination of whether the disputed domain name is confusingly similar to Complainant’s mark. Therefore, the Panel finds that the <dairylandauto.com> domain name is confusingly similar to Complainant’s DAIRYLAND mark under 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 Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant must show that Respondent lacks all rights and
legitimate interests in the disputed domain name to meet its initial burden
under Policy ¶ 4(a)(ii). After Complainant has made
a prima facie case, the burden shifts
to Respondent to demonstrate that it has those rights and interests. The Panel concludes that Complainant’s
assertion that Respondent lacks rights and legitimate interests is sufficient
to make a prima facie case under
Policy ¶ 4(a)(ii).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Because Respondent has failed to respond to the Complaint,
the Panel presumes that Respondent lacks all rights and legitimate interests in
the <dairylandauto.com>
domain name. See Law Soc’y of Hong Kong v.
Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A
respondent is not obligated to participate in a domain name dispute . . . but
the failure to participate leaves a respondent vulnerable to the inferences
that flow naturally from the assertions of the complainant and the tribunal
will accept as established assertions by the complainant that are not
unreasonable.”); see also
Vanguard Group, Inc. v. Collazo, FA
349074 (Nat. Arb. Forum
Complainant states that it has never licensed or otherwise
authorized Respondent to use the DAIRYLAND mark. The WHOIS information lists the registrant as
“International Names Ltd.,” indicating that Respondent is not commonly known by
the <dairylandauto.com>
domain name. The Panel concludes that
Respondent has not demonstrated rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum
Respondent is using the disputed domain name to advertise
links to competing automobile insurance websites and also displaying unrelated
links. The Panel finds that Respondent’s
use of the website that resolves from the disputed domain name does not
evidence 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). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does 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).”); 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).
Moreover, Respondent has offered the <dairylandauto.com> domain name for sale. The Panel finds that this offer of the disputed domain name for sale is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s offer to sell the disputed domain name is
evidence of registration and use in bad faith under Policy ¶ 4(b)(i). In Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb. Forum
In at least two other UDRP
decisions, Respondent has been ordered to transfer the disputed domain names to
the Complainants. See Xsens Techs. B.V. v. Int’l Names Ltd.,
D2006-1280 (WIPO
The website that resolves
from the disputed domain name links Internet users to Complainant’s
competitors. The Panel finds that this
use is likely to disrupt the business of Complainant under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum
Finally, Respondent has
listed links to both competing and unrelated websites, and is
benefiting from the likely
confusion between the disputed domain name and the DAIRYLAND mark, and
receiving revenue through a “pay-per-click” scheme. The Panel finds that, pursuant to Policy ¶
4(b)(iv), Respondent is improperly attracting Internet users to its website for
commercial gain, and creating a likelihood of confusion with the DAIRYLAND mark
as to the source, sponsorship, affiliation, or endorsement of the website that
resolves from the <dairylandauto.com>
domain name. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30,
2000) (finding bad faith where the respondent's use of the domain name at issue
to resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent registered a domain name confusingly similar to the
complainant’s mark and the domain name was used to host a commercial website
that offered similar services offered by the complainant under its mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dairylandauto.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 11, 2008
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