Pacific Life Insurance Company and Pacific Life & Annuity Comapany v. PabloPalermao
Claim Number: FA0803001159962
Complainant is Pacific Life Insurance Company and Pacific Life &
Annuity Company (collectively “Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pacificlifeannuities.com>, registered with Moniker Online Services, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 10, 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@pacificlifeannuities.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 <pacificlifeannuities.com> domain name is confusingly similar to Complainant’s PACIFIC LIFE mark.
2. Respondent does not have any rights or legitimate interests in the <pacificlifeannuities.com> domain name.
3. Respondent registered and used the <pacificlifeannuities.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pacific Life Insurance Company, is in the
business of life and health insurance, annuities, mutual fund management, investment
counseling and management, mortgage and security brokerage services and pension
plan administration and investment.
Complainant uses the PACIFIC LIFE mark in accordance with this business
and registered the mark with the United States Patent and Trademark Office
(“USPTO”) on
Respondent, Pablo Palermao, registered the disputed domain
name <pacificlifeannuities.com> 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.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the PACIFIC LIFE mark pursuant to Policy ¶ 4(a)(i). 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.").
The Panel finds that Respondent’s <pacificlifeannuities.com> domain name is confusingly similar
to Complainant’s PACIFIC LIFE mark under Policy ¶ 4(a)(i) as it contains
Complainant’s entire mark without the space and adds the plural of the generic
term “annuity,” which has an obvious relationship to Complainant’s business of
underwriting life and health insurance and annuities. Additionally, Complainant operates one other
website that incorporates this term, the <pacificlifeandannuity.com>
domain name. Accordingly, Respondent’s disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See
Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb.
Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant
in determining the similarity of a domain name and a mark because punctuation
and spaces are not reproducible in a domain name.”); see also Oki Data Ams., Inc.
v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks”); American 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks
rights and legitimate interests with respect to the <pacificlifeannuities.com> domain name. However, once Complainant makes a prima facie case, the burden of proof
shifts, and Respondent must prove that it has rights or legitimate interests in
the disputed domain name. The Panel
finds that Complainant has established a prima
facie case. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14,
2001) (“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.”); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Respondent is using the <pacificlifeannuities.com>
domain name to display hyperlinks to a parked page with a list of third-party
websites, some of which are in direct competition with Complainant. The Panel infers that Respondent is using the
disputed domain name to earn click-through fees, and thus finds that Respondent
has not made 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 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).
Additionally, Respondent’s
WHOIS information does not indicate that Respondent is commonly known by the
<pacificlifeannuities.com> domain name and there is no other evidence in the
record to suggest that Respondent is commonly known by the disputed domain
name. Moreover, Complainant asserts that
Respondent is not authorized to use Complainant’s PACIFIC LIFE mark and that
Respondent is not associated with Complainant in any way. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Based on the uncontested evidence presented by Complainant,
the Panel infers that Respondent receives click-through fees for the hyperlinks
displayed on the website that resolves from the <pacificlifeannuities.com> domain name. The Panel also finds that Respondent’s
disputed domain name is capable of creating a likelihood of confusion as to
Complainant’s sponsorship and affiliation with the disputed domain name and
corresponding website. Such commercial
benefit constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); 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.’”).
Moreover, the Panel finds that
Respondent is using the <pacificlifeannuities.com> domain name to redirect Internet users to a website
that contains third-party hyperlinks, some of which are in direct competition
with Complainant. Such use constitutes a
disruption of Complainant’s business and qualifies as bad faith registration
and use under 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 EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that the respondent registered and used the domain name <eebay.com> in
bad faith where the respondent has used the domain name to promote competing
auction sites).
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 <pacificlifeannuities.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: April 30, 2008
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