Houston Insurance v. Blacker Media
Claim Number: FA0208000117329
PARTIES
Complainant
is Houston Insurance, Hyde Park, MA (“Complainant”)
represented by David J Houston. Respondent is Blacker Media, Los Angeles, CA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
The
domain name at issue is <insurance.biz>,
registered with Signature Domains.
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.
Mr.
Peter L. Michaelson, Esq., as Panelist.
The
Complaint was brought pursuant to the Start‑up Trademark Opposition
Policy (“STOP" or "Policy”) available at http://www.neulevel.biz/ardp/docs/stop.html, which was adopted by
NeuLevel, Inc. ("NeuLevel"), as the Registry Operator, and approved
by Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001,
and revised by NeuLevel on September 19, 2001; and in accordance with the
Rules for STOP as adopted by NeuLevel and also approved by ICANN on May 11,
2001 ("STOP Rules") and as supplemented by the National Arbitration
Forum Start‑up Trademark Opposition Policy for .BIZ "STOP"
Supplemental Rules then in effect (“STOP Supplemental Rules”).
Complainant
has standing to file a STOP Complaint, as it timely filed the required
Intellectual Property (IP) Claim Form with NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a
STOP Complaint against Respondent Blacker Media with NeuLevel and with the
National Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on July 31, 2002; the Forum
received a hard copy of the Complaint on August 5, 2002.
On
August 5, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 26,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the STOP Rules.
A
timely Response was received and determined to be complete on August 26, 2002.
On September 10, 2002, pursuant to STOP Rule 6(b), the
Forum appointed Mr. Peter L. Michaelson,
Esq., as the single Panelist.
Complainant
requests that the domain name be transferred from Respondent, Blacker Media, to
Complainant.
A. Complainant
1. Identicality
Complainant contends that the disputed
domain name <insurance.biz> is
identical to the term “insurance" in which it claims common law trademark
rights.
Specifically,
Complainant states that it and its predecessor firms have used the term
"insurance" as a common law service mark, in both its name and
advertising for approximately 100 years.
Complainant, serving as an insurance agent, provides insurance services
to its customers.
Curiously,
Complainant admits that the term "insurance" is a generic term and
hence ineligible for registration as a mark by the US Patent and Trademark
Office in either the principal or supplemental registers. Complainant cites to U.S. Department of
Commerce, Patent and Trademark Office’s Examination Guide NO. 2‑99. Section V.
Generic Refusals (see www.uspto.gov/web/offices/tac/notices/guide299.htm).
Hence,
Complainant concludes that, by virtue of its asserted common law rights and
apparently in spite of the generic nature of the term "insurance", it
has satisfied the requirements of paragraph 4(a)(i) of the Policy.
2. Rights and legitimate interests
Complainant contends that Respondent has
no rights or legitimate interests in the disputed domain name.
Specifically,
Complainant simply asserts, without more, that:
(a)
Respondent
is neither the owner nor the beneficiary of a trade or service mark that is
identical to the domain name subject of the Complaint; or
(b)
before any
notice to Respondent of the dispute, Respondent did not use, or had no
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(c)
Respondent
has not been commonly known by the domain name, (as an individual, business, or
other organization).
Thus, Complainant concludes that
Respondent cannot demonstrate any rights or legitimate interests in the
disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
3. Bad faith use or registration
Complainant contends that Respondent's
conduct evidences bad faith registration of the disputed domain name.
In
particular, Complainant simply asserts, without more, that Respondent:
(a)
has
registered the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to Complainant or to a
competitor of Complainant, for valuable consideration in excess of Respondent’s
documented out‑of‑pocket costs directly related to the domain name;
or
(b)
has
registered the domain name in order to prevent Complainant from reflecting the
mark in a corresponding domain name; or
(c)
has
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(d)
by using
the domain name, has intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s web site or other on‑line location, by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or location
or of a product or service on Respondent’s web site or location.
Thus, Complainant concludes that this Respondent
has registered or used the disputed domain name in bad faith contrary to
paragraph 4(a)(3) of the Policy.
B. Respondent
1. Identicality
The
crux of Respondent's position is that Complainant's purported mark in the term
"insurance", as Complainant currently uses that term, is generic and
hence not susceptible of conferring any enforceable trademark rights, under the
Policy, on Complainant.
In
that regard, Respondent states that the principle that generic marks provide no
enforceable rights is well‑established under the Policy, citing to National Bus. Furniture v. BDG Mktg., FA 112588 (Nat. Arb. Forum July 5,
2002), where the Panel stated: "Complainant presents no evidence of any
kind for the proposition that it has trademark or service mark rights in the
word FURNITURE . . . Indeed,
Complainant could not present such evidence.
The word, FURNITURE, is a common generic word in the English
language."
Furthermore,
Respondent points to Park ‘N Fly, Inc. v.
Dollar Park & Fly, Inc., 469 U.S. 189 (1985), where the United States
Supreme Court recognized that "A mark that is a common descriptive name of
an article is referred to as a generic mark.
A generic term is one that refers to the genus of which a particular
product is a species".
Hence,
Respondent concludes that in the absence of any trademark rights in the term
"insurance", Complainant has failed to satisfy paragraph 4(a)(i) of
the Policy and thus has no rights against a domain name that identically
includes that term.
2. Rights and legitimate interests
Respondent
contends that, contrary to Complainant's position, Respondent does have rights
and legitimate interests in the disputed domain name under
paragraph 4(a)(ii) of the Policy.
Specifically
and first, Respondent argues that since Complainant has only parroted the
various elements of paragraph 4(c) of the Policy in the Complaint without
providing any evidence to support its contentions under that paragraph,
Complainant has simply failed to show any basis on which Respondent lacks a
right or legitimate interest in the disputed domain name.
Second,
Respondent states that it has a legitimate interest because it registered the
disputed domain name for use in conjunction with a bona fide web site to
provide insurance information and resources, and it launched a preliminary site
on June 28, 2002, prior to having received notice of this proceeding.
In
particular, Respondent states that under the Policy, a legitimate interest is
established under paragraph 4(c)(ii) where, as here, the domain name is
registered in connection with “demonstrable preparations to use” it in
connection with a “bona fide offering of goods or services.” In that regard, Respondent is using the
disputed domain name in connection with a web site about insurance, and it has
developed a preliminary site.
Respondent contends that this is sufficient to establish its legitimate
interest in the name under the Policy.
In that regard, Respondent points to, inter alia, Am. Greetings
Corp. & Those Characters From Cleveland, Inc. v. Richard Mackessy, FA
109374 (Nat. Arb. Forum May 22, 2002), where a Respondent had provided
handwritten notebook entries and screen shots of its proposed web site and the
Panel held that this established Respondent’s interest. Relying on precedent established under the
UDRP, the Panel explained that “[e]ven perfunctory preparations have been held
to suffice to establish a legitimate interest.”
Respondent
also states that its legitimate interest is not diminished because its web site
is not resolvable through the disputed domain name <insurance.biz>
‑‑ which it asserts is expected given that the name remains on hold
by the registry during the pendency of the STOP process.
Lastly,
Respondent asserts that inasmuch as the term “insurance” is a common word in
the dictionary, that fact also weighs heavily in favor of Respondent for the
reason that Complainant cannot claim exclusive rights to a common word. Respondent states that its search on the
Internet search engine Google for the word “insurance” yielded 27.8 million
third‑party web pages. A finding
of multiple third‑party results on the Google search engine has been
expressly recognized in Gene Logic, Inc.
v. Cho Kyu Bock, FA103042 (Nat. Arb. Forum Mar. 4, 2002), which is a STOP
proceeding, as “a good test of genericness or descriptive terms.” Moreover, Respondent states that over 1,800
pending and active third‑party trademark registrations exist which
incorporate the word “insurance” and which are all unaffiliated with
Complainant. There are over 2,000 third‑party
Internet domain names containing that word.
In view of the fact that the term "insurance" is a common
word, Respondent concludes by stating that under the Policy, registration of a
domain name incorporating merely a common word or term to use for a business,
as here, establishes a Respondent’s legitimate interest. Citing to, e.g., Rusconi Editore S.p.A. v. FreeView Publ’g, Inc., D2001‑0875
(WIPO Oct. 10, 2001); Gen. Mach. Prods
Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000); Car Toys, Inc. v. Informa Unlimited,
Inc, FA 93682 (Nat. Arb. Forum Mar. 20, 2000) and First American Funds, Inc. v. Ult.Search, Inc., D2000‑1840
(WIPO April 20, 2001), Respondent states that several Panels have observed:
"Where
the domain name and trademark in question are generic—and in particular where
they comprise no more than a single, short, common word—the rights/interests
inquiry is more likely to favor the domain name owner. The ICANN UDRP Policy is very narrow in
scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not
every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents
for the Uniform Dispute Resolution UDRP Policy (Oct. 24, 1999)."
Consequently,
Respondent closes by stating that it does have rights and legitimate interests
to the disputed domain name under paragraph 4(a)(ii) of the Policy.
3. Bad faith use or registration
Respondent
contends that it has neither used nor registered the disputed domain name in bad
faith under paragraph 4(a)(iii) of the Policy.
Specifically,
with respect to the bad faith factors enumerated in paragraph 4(c) of the
Policy, Respondent contends that there is absolutely no evidence of record that
the disputed domain name was registered with the intent to sell it to
Complainant, to disrupt Complainant's business, to prevent Complainant from
registering its trademark in a domain name or to confuse its consumers. Simply
stated, Complainant has proffered no evidence of bad faith registration or use
at all.
Further, Complainant states that where domain names incorporate mere common
terms – as is the case here ‑ it does not constitute bad faith to
register them, despite having received IP claims under the Policy. In that regard, Respondent cites to, inter
alia, Pivotal Corp. v. Pivotal Servs.
Ltd., FA 112602 (Nat. Arb. Forum June 24, 2002), in which a panel held that
no bad faith occurred where mark was a “single common word” despite “notice of
Complainant’s IP rights.”
Thus,
Respondent concludes by stating that inasmuch as the Complainant failed to
prove any bad faith registration or use on the part of Complainant, Complaint
must be denied.
A. Complainant's mark
The term “Insurance”
standing alone has not been federally registered by Complainant as a trademark
or service mark for use with "insurance services" and given its
generic nature, as recognized by Complainant, is not susceptible of
registration.
Hence, to the extent
this term conveys any exclusivity at all as a service mark, the extent of those
rights, if any, must be determined under common law.
B. Complainant and Respondent’s activities
Complainant's
current trade name is "Houston Insurance". Complainant, serving as an insurance agent, provides various
lines of insurance services to its customers. Complainant and its predecessor
firms have used term "insurance" in both its tradename and in
advertising for approximately 100 years.
On July 31, 2002, Complainant timely
filed its STOP Complaint (ticket number 1685P58Nc1, challenge priority 6) with
the Forum to challenge the registration of the disputed domain name, and to
which a Response has been timely filed.
As indicated in a
declaration of Mr. Joshua Blacker ‑‑ principal of Respondent and an
entrepreneur (a copy of this declaration appears in Exhibit 1 to the Response),
Respondent registered the disputed domain name for use with a web site about
insurance simply because that name incorporates the common word
“insurance.” Furthermore, as stated in
the Blacker declaration, that web site is part of Respondent’s "Consumer
Network Family" of sites. An
initial version of the <insurance.biz> web site is linked from
Respondent’s web site at <consumernetwork.biz>. This initial web site was published June 28, 2002, prior to
Respondent having received any notice of this proceeding. The site will be hosted through the disputed
domain name upon successful resolution of the present dispute. A hard‑copy print‑out of the
homepage of the intended, <insurance.biz>, site appears in Exhibit
2 to the Response.
The common word
“insurance” is subject to substantial third party use unaffiliated with
Complainant. A search on the Internet
search engine Google for the word “insurance” yielded 27.8 million third party
web pages that are unaffiliated with Complainant (a first page of Google
results appears in Exhibit 3 to the Response).
Further, there are over 1,800 pending and active third party trademark
registrations, which incorporate "insurance" (a hard‑copy of
the first page of the search reports generated by the web‑based and
publicly accessible Trademark Electronic Search Service (TESS) available from
the United States Patent and Trademark Office appears in Exhibit 4 to the
Response). Further, there are over
2,000 third party “.com” domain names alone which contain the common word
“insurance.” (a copy of a print‑out from <namedroppers.com> web
site showing the first 25 results of domain names containing the term
"insurance" appears in Exhibit 5 to the Response).
Lastly, as stated in
the Blacker declaration, Respondent has never offered to sell the disputed
domain name to Complainant or any party, and has no intention of doing so.
Furthermore, Respondent, as indicated in the Blacker declaration, did not
intend to disrupt Complainant’s business, confuse users, or prevent Complainant
from reflecting its mark in a corresponding domain name.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain
name is identical to a trademark or service mark in which the Complainant has
rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the domain name has been registered or
is being used in bad faith.
Substantial
commonality exists between the ICANN policies governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and STOP proceedings. While numerous STOP decisions having been
rendered to date, a far larger corpus of several thousand UDRP decisions
currently exists and which provides very useful guidance for many of the same
issues that arise under STOP. Hence,
the Panel, where appropriate and pursuant to paragraph 15(a) of the STOP Rules,
will exercise its discretion and rely on relevant UDRP decisions as applicable
precedent here.
Identicality/Complainant's
rights in its mark
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (“IP”) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service mark
in which a Complainant asserts rights. The existence of the “.biz” generic top‑level domain
(“gTLD”) in the disputed domain name is not a factor for purposes of
determining that a disputed domain name is not identical to the mark in which
Complainant asserts rights.
Numerous Panels including this one, when
faced with unregistered marks, have upheld their protectable status in the
United States under the Policy. In that
regard, when faced with this issue, the Panel in Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc., FA 95560 (Nat.
Arb. Forum, Nov. 2, 2000), held: “ICANN dispute resolution policy is broad in
scope in that the reference to a trademark or service mark in which the
complainant has rights means that ownership of a registered mark is not
required. Unregistered or common law trademark or service mark rights will
suffice to support a domain name complaint under the policy”. See, e.g., The Paris Pages v. Wooho T&C Ltd. d/b/a/ RGNAMES.COM and Youngmi
Park, FA 110763 (Nat. Arb. Forum July 10, 2002); Frampton v. Frampton Enters., Inc., D2002‑0141
(WIPO Apr. 17, 2002); Am. Online, Inc. v.
Deep d/b/a Buddy USA Inc., FA 96795 (Nat. Arb. Forum, May 14, 2001); Missing Children Minnesota v. Run Yell Tell,
Ltd., FA 95825 (Nat. Arb. Forum, Nov. 20, 2000); Mike Warner 2001 v. Larson, FA 95746
(Nat. Arb. Forum Nov. 5, 2000); CMG
Worldwide Inc. v. Page, FA 95641 (Nat. Arb. Forum, Nov. 8, 2000); Home Props. v. SMSOnline, FA 95639 (Nat.
Arb. Forum Nov. 2, 2000); and Bridal
Rings Co. v. Yemenian, FA 95608 (Nat. Arb. Forum Oct. 26, 2000). Furthermore, the Panel in United States Postal Service v. Consumer
Info. Org., FA 95757 (Nat. Arb. Forum Nov. 27, 2000), held: “The UDRP
does not discriminate between registered and unregistered marks.” In Exario
Network Inc. v. THE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE, AF‑0536
(eResolution, Dec. 11, 2000), the Panel recognized: “It is well established
that a complainant need not own a registered trademark to invoke the
policy. It is sufficient that a
complainant have rights in an unregistered trademark.” In that regard, see also Sand Hill Wholesale of Ohio v. Hatton, FA
95970 (Nat. Arb. Forum Dec. 18, 2000); see also David Taylor Cadillac/Buick Co. v. Spider Works, Ltd., FA 95832
(Nat. Arb. Forum Nov. 30, 2000); see similarly Am. Home Prods. Corp. v. Healthy Futures, D2000‑0454 (WIPO
Aug. 3, 2000); Cho Yong Pil v. ImageLand,
Inc., D2000‑0229 (WIPO May 10, 2000); SeekAm. Networks, Inc. v. Masood, D2000‑0131 (WIPO
Apr. 13, 2000); and Bennett Coleman
& Co. v. Lalwani; and Bennett Coleman & Co. v. Long Distance
Tel. Co., D2000‑0014 and 2000‑0015 (WIPO Mar. 11, 2000).
However, not all unregistered terms
qualify for common law trademark protection.
Though
common law marks are sufficient to trigger the Policy, nevertheless for an
unregistered term to acquire common law trademark status, that term, as used in
commerce by its owner, must have acquired, through its use, an appropriate
level of distinctiveness such that the term has acquired sufficient secondary
meaning in the mind of the relevant consuming public. Generic terms, when used in a manner consistent with their common
meaning, are simply incapable of ever acquiring distinctiveness or there
through appropriate secondary meaning. See,
e.g., Nat. Bus. Furniture v. BDG
Mktg., FA 112588 (Nat. Arb. Forum July 5, 2002); Discount Tire Co. v. Jeff Tezer Enters., FA 112506 (Nat. Arb. Forum
July 1, 2002); Eugene E. Pettinelli v.
Postel Servs., Inc., FA 112600 (Nat. Arb. Forum June 25, 2002); The
Boots Co. Plc v. Challenge Servs. (CSI), DBIZ2002‑00096 (WIPO June
18, 2002); and fabric.com v. LinZan Song,
FA 109701 (Nat. Arb. Forum June 1, 2002).
In
that regard, § 2.02 of Gilson, Trademark Protection and Practice (©
1996, Matthew Bender) states:
"A generic name ... is the name
if a particular genus or class of things or member of such a class. It is denominative in character, is
ordinarily a noun and it answers the questions 'What is it?' or 'What do you
call it?'. Thus, 'piano' is the generic
name for one member of a class of keyboard instruments. ... A generic name may be a dictionary term and
an established part of the English language.
Such names, like 'clarinet' and 'trumpet', are free for the public to
use. No one can appropriate such a name
as his trademark. For one reason, no
one could sustain the enormous burden of showing that the public associates the
name exclusively with him. A common
descriptive or generic name is thus virtually impossible to remove from the
public domain, and no amount of advertising or other evidence of secondary
meaning is likely to succeed."
"Insurance"
is clearly such a generic term. Its
dictionary definition, as given on page 594 of Webster's New Collegiate
Dictionary (© 1980, G & C Merriam Company) and of which judicial notice
is taken, includes: "the action or process of insuring, the state of being
insured, the business of insuring persons or property, coverage by contract
whereby one party undertakes to indemnify or guarantee another against loss by
a specified contingency or peril".
Here,
there is absolutely no question that Complainant is using the term
"insurance" in a manner entirely consistent with its dictionary
meaning, and hence in its generic sense, as a name of a class of services which
Complainant currently offers (and has done so for the past 100 years): insuring
its customers against peril. In fact,
Complainant has totally failed to adduce any proof whatsoever that it uses this
term in any other manner.
This
Panel finds that it is immaterial whether Complainant has used the term in that
manner for one month, one year, ten years or, as here, approximately 100
years. A generic term, when used in its
generic sense ‑‑ as Complainant does, will never attain common law
trademark status regardless of the longevity of its prior use. That term is simply incapable and will never
be capable of ever distinguishing the services (in terms of, e.g., their
source, origin or quality) which Complainant offers under that term from the
same or similar services offered by another.
No amount of advertising or secondary meaning (though Complainant has
shown absolutely none of either here) will suffice to overcome the generic
nature of the term, as understood by the public.
To
the extent that Complainant owns common law trademark rights, those rights
likely reside in its complete tradename "Houston Insurance" but
clearly not in the term "insurance" standing alone. However, the Complainant did not challenge
the domain name <houstoninsurance.biz> based on its common law mark
HOUSTON INSURANCE. Rather, it
challenged the domain name <insurance.biz> based on common law
rights it asserts it has in the term "insurance". However, to successfully do so, as threshold
matter, it must have trademark rights in the term "insurance", rights
which here it clearly does not and can never obtain.
Since
Complainant has no such rights in the term "insurance" and is
incapable of ever acquiring any such rights, based on its current usage of that
term, Complainant has failed to satisfy paragraph 4(a)(i) of the Policy. As such, Complainant has failed to meet its
burden under the Policy; hence its request for relief must be denied.
The
Panel's inquiry now turns under the Policy to assessing whether Respondent has
rights and legitimate interests in the disputed domain name. If Respondent has such rights and legitimate
interests, then, under paragraph 4(a)(ii) of the Policy, the Panel must dismiss
the Complaint and permit no subsequent challenges, as against Respondent, to
the disputed domain name. Alternatively,
if Respondent does not possess any rights or legitimate interests, the Panel
then also dismisses the Complaint but permits subsequent challenges to the
name.
Simply
stated, Respondent has rights and legitimate interests to the disputed domain name
under paragraph 4(c)(ii) of the Policy.
This paragraph states that rights and legitimate interests inhere in a
Respondent if before any notice to Respondent of the dispute, that Respondent
has made use of, or made "demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide
offering of goods or services".
It
is eminently clear to this Panel that Respondent's undisputed activities here,
which are fully described above, in building its site, with which it intended
to use the disputed domain name, precede the date on which it could have
received notice of this dispute.
Furthermore,
having a working site resolvable through the contested domain name is not
necessary ‑‑ and in fact was frustrated not through any actions of
Respondent but rather by the registry through its actions in placing that name
has been on a "hold" status since the commencement of the STOP
process and maintaining that status until the entire STOP process is concluded. This Panel finds that Respondent's
intentions and its subsequent actions, which are manifested through its actual
construction of its web site, even though that site is currently accessible
through a different domain name, are more than sufficient to constitute
"demonstrable preparation" under paragraph 4(c)(ii) of the Policy.
Therefore,
Respondent has satisfied paragraph 4(c)(ii) of the Policy and thus has rights
and legitimate interests in the disputed domain name. Accordingly, no further STOP challenges will be permitted to this
name and as against Respondent.
In view of the above findings, there is
no need for the Panel to address the issue of whether Respondent either
registered or used the disputed domain name in bad faith.
Reverse Domain Name Hijacking
Unquestionably, Complainant was misguided
and mistaken in bringing its complaint.
That much is clear from Complainant's total failure of proof and
Complainant's own admission that the term "insurance" in which it
purports to claim trademark rights is generic.
Nevertheless, under paragraph 1 of the
Stop Rules, "reverse domain name hijacking" is defined as "using
the Policy in bad faith to attempt to
deprive a registered domain name holder of a domain name" [emphasis added].
Making a mistake, in and of itself
without more, is simply not enough to reflect bad faith. More is needed. In this Panel's view, to constitute "bad faith", a
Complainant's conduct must be sufficiently egregious towards a Respondent. What constitutes such conduct in any one
instance is ill‑defined at best and thus must be left, under a factual
assessment, to a case‑by‑case determination. Nevertheless, a mistaken view on the part of
a Complainant, without more, simply does not suffice.
For example, bad faith likely exists
where a Complainant, in knowing disregard of a Respondent's unassailable right
or legitimate interest in a contested domain name, or of a clear lack of bad
faith use and registration of that name, or even of a sufficient likelihood
that Respondent possesses a legitimate interest in the name, nevertheless
proceeds to file its Complaint or generally speaking, as more succinctly
stated: deliberately abuses the process.
In that regard, see, e.g.: Mohawk
Brands, Inc. v. iSMER, DBIZ2002‑00242 (WIPO July 10, 2002) citing
to Sydney Opera House Trust v. Tilynx
Pty. Ltd., D2000‑1224 (WIPO Oct. 31, 2000); see also Goldline Int’l, Inc. v. Gold Line, D2000‑1151
(WIPO Jan. 2, 2001) and SmartDesign
LLC v. Hughes, D2000‑0993 (WIPO Oct. 18, 2000).
Given the limited record before it, the
Panel finds that Complainant's actions here simply do not rise to the level of
being so egregious as to evince bad faith necessary to support a finding of
reverse domain name hijacking.
DECISION
In
accordance with paragraphs 10 of the Policy and 15 of the STOP Rules:
(a) the relief sought by Complainant is
hereby DENIED; and
(b)
inasmuch as
Complainant, contrary to its assertions, does not have any rights in the
INSURANCE mark, the Complaint is hereby DISMISSED.
Further,
inasmuch as the Panel finds that Respondent does have rights and legitimate
interests in the disputed domain name, the Panel orders that subsequent STOP
challenges to this domain name, as against this Respondent, will NOT be permitted.
Peter L. Michaelson, Esq., Panelist
Dated: September 20, 2002
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