Liberty Mutual Insurance Company v Domain Park Limited

Liberty Mutual Insurance Company v. Domain Park Limited

Claim Number: FA0805001189049

PARTIES

Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Christopher Sloan, Massachusetts, USA. Respondent is Domain Park Limited (“Respondent”), Samoa.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <libertymutualremittance.com>, <libertymutualclaim.com>, <libertymusualinsurance.com>, <libertymutualrealty.com>, <libertymutualagency.com> and <ibertymutual.com>, registered with Moniker Online Services, Inc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 9, 2008.

On May 7, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <libertymutualremittance.com>, <libertymutualclaim.com>, <libertymusualinsurance.com>, <libertymutualrealty.com>, <libertymutualagency.com> and <ibertymutual.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 May 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 4, 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@libertymutualremittance.com, postmaster@libertymutualclaim.com, postmaster@libertymusualinsurance.com, postmaster@libertymutualrealty.com, postmaster@libertymutualagency.com and postmaster@ibertymutual.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On June 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

Respondent does not have any rights or legitimate interests in the <libertymutualremittance.com>, <libertymutualclaim.com>, <libertymusualinsurance.com>, <libertymutualrealty.com>, <libertymutualagency.com> and <ibertymutual.com> domain names.

Respondent registered and used the <libertymutualremittance.com>, <libertymutualclaim.com>, <libertymusualinsurance.com>, <libertymutualrealty.com>, <libertymutualagency.com> and <ibertymutual.com> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Liberty Mutual Insurance Company, is an insurance provider that operates in over 20 countries, including the United States. Based on 2007 revenues, Complainant is listed in the Fortune 100 list of largest American corporations. Complainant has marketed its insurance and underwriting products and services domestically since 1917, and internationally since 1993, under the LIBERTY MUTUAL mark (Reg. No. 1,405,249, issued August 12, 1986), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant has expended substantial monies in acquiring its goodwill surrounding the mark. Finally, Complainant owns and operates the <libertymutual.com>, <libertymutualinsurance.com>, <libertymutualgroup.com>, <libertymutualrewards.com> and <libertymutualagencymarkets.com> domain names in connection with its business conducted over the Internet.

Respondent registered the following disputed domain names on their respective dates: the <libertymutualremittance.com> domain name on October 26, 2007, the <libertymutualclaim.com> domain name on October 21, 2007, the <libertymusualinsurance.com> domain name on September 8, 2007, the <libertymutualrealty.com> domain name on May 10, 2007, the <libertymutualagency.com> domain name on July 2, 2007 and the <ibertymutual.com> domain name on September 25, 2007. All of the disputed domain names resolve to websites that feature third-party links and advertisements, many of which directly compete with Complainant’s insurance and underwriting operations.

Respondent has also been the respondent in other UDRP proceedings wherein the disputed domain names were transferred from Respondent to the respective complainants.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant registered its LIBERTY MUTUAL mark with the USPTO in 1986, which predates Respondent’s registration of the disputed domain names in the instant proceeding by a number of years. The Panel finds that Complainant’s registration of the LIBERTY MUTUAL mark with the USPTO therefore confers upon Complainant sufficient 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

Respondent’s <libertymutualremittance.com>, <libertymutualclaim.com>, <libertymusualinsurance.com>, <libertymutualrealty.com>, <libertymutualagency.com> and <ibertymutual.com> domain names carry a number of slight alterations to Complainant’s LIBERTY MUTUAL mark. For starters, all of the disputed domain names add the generic top-level domain (“gTLD”) “.com,” though the Panel notes that such an addition bears no impact on any findings in the Panel’s decision. Secondly, the <ibertymutual.com> domain name simply drops the first “l” from Complainant’s mark. Such an omission cannot carry any meaningful distinction for the disputed domain name, as Complainant’s mark remains relatively clear and almost phonetically identical. Third, the <libertymutualremittance.com>, <libertymutualclaim.com>, <libertymutualrealty.com> and <libertymutualagency.com> domain names carry Complainant’s unaltered LIBERTY MUTUAL mark, but insufficiently set apart the disputed domain names with a generic word that describes Complainant’s insurance and underwriting services, including “remittance,” “claim,” “realty,” and “agency.” A generic word, being the only alteration in a disputed domain name, generally fails to distinguish said disputed domain name since the mark remains the prominent feature, and even more so when the generic words fairly describe Complainant’s operations, as is the case here. Finally, the <libertymusualinsurance.com> domain name substitutes the “t” in “mutual” with “s", also insufficient to distinguish it from Complainant's mark. The Panel finds that all of the disputed domain names in this case are confusingly similar to Complainant’s LIBERTY MUTUAL mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). This burden requires Complainant to assert facts supporting this allegation in order to obtain a sufficient prima facie case. Because the Panel finds that Complainant has met this burden, Respondent is therefore compelled to prove its rights and legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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).

Respondent’s disputed domain names resolve to websites that feature third-party advertisements and links, many of which lead to Complainant’s direct competitors. Respondent presumably receives monetary benefits through advertisement referral fees. The Panel finds that Respondent’s use of the disputed domains name does not constitute 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 Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); 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).

There is no evidence in the record, including the WHOIS domain name registration information, which suggests that Respondent is commonly known by any of the disputed domain names. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under 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 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).

Respondent’s <ibertymutual.com> domain name fits the definition of typosquatting, which is the registration of a disputed domain name that capitalizes on Internet users’ typographical mistakes. The result of Respondent’s registration and use diverts Internet users committing this error to advertisements for Complainant’s competitors. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <ibertymutual.com> domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has been the respondent in other UDRP proceedings wherein the disputed domain names in those cases were transferred from Respondent to the respective complainants. See Morgan Stanley v. Domain Park Ltd., FA 1045852 (Nat. Arb. Forum Sept. 10, 2007); see also State Farm Mut. Automobile Ins. Co. v. Domain Park Ltd., FA 1072921 (Nat. Arb. Forum Oct. 10, 2007). Respondent has also registered multiple disputed domain names bearing Complainant’s mark in this case. Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

Respondent’s use of the disputed domain names diverts Internet users to websites that feature links and advertisements to Complainant’s direct competitors. While Respondent may not be a strict competitor of Complainant, such a finding is not necessary to determine that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii). It is merely sufficient to find that Respondent primarily intended to disrupt Complainant’s business. Given the multiple disputed domain names in this case, it is clear that Respondent intended to commercially benefit from Complainant’s goodwill, which disrupts Complainant’s business by diverting Internet users from reaching Complainant. The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).

As stated previously, Respondent’s disputed domain names are confusingly similar to Complainant’s LIBERTY MUTUAL mark. Moreover, these disputed domain names correspond to websites that feature advertisements to Complainant’s direct competitors. Respondent has therefore created a substantial likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain names and corresponding websites. Such is evidence of Complainant’s registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).

The Panel finds that Respondent’s registration and use of the <ibertymutual.com> domain name constitutes typosquatting and is therefore evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <libertymutualremittance.com>, <libertymutualclaim.com>, <libertymusualinsurance.com>, <libertymutualrealty.com>, <libertymutualagency.com> and <ibertymutual.com> domain names be TRANSFERRED from Respondent to Complainant.

Sandra J. Franklin, Panelist

Dated: June 23, 2008

NATIONAL ARBITRATION FORUM