Assurant, Inc. v. Forsyte Corporation
Claim Number: FA0806001210537
Complainant is Assurant, Inc. (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurantemploeebenefits.com>, registered with Abdomainations.ca 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2008.
On July 25, 2008, Abdomainations.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <assurantemploeebenefits.com> domain name is registered with Abdomainations.ca Inc. and that Respondent is the current registrant of the name. Abdomainations.ca Inc. has verified that Respondent is bound by the Abdomainations.ca 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").
25, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 14, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a well-known
provider of insurance and financial services in
Complainant holds service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT (Reg. No. 2,543,367, issued Feb. 26, 2002) and ASSURANT EMPLOYEE BENEFITS marks (Reg. No. 2,946,817, issued May 3, 2005) marks.
Respondent is neither commonly known by the <assurantemploeebenefits.com> domain name nor authorized to register domain names featuring Complainant’s ASSURANT EMPLOYEE BENEFITS mark in any way.
Respondent registered the disputed <assurantemploeebenefits.com> domain name on May 3, 2008.
Respondent’s domain name does not currently resolve to an active web page.
Respondent’s <assurantemploeebenefits.com> domain name is confusingly similar to Complainant’s ASSURANT EMPLOYEE BENEFITS mark.
Respondent does not have any rights or legitimate interests in the domain name <assurantemploeebenefits.com>.
Respondent registered and uses the <assurantemploeebenefits.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the ASSURANT EMPLOYEE BENEFITS
mark. Complainant’s evidence of service mark
registrations with the USPTO establishes Complainant’s rights in this mark for
purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bin g Glu,
FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as
a result of its registration with the
domain name is confusingly similar to Complainant’s ASSURANT EMPLOYEE BENEFITS
mark as it contains the dominant portions of Complainant’s mark, merely omitting
the spaces separating the terms and the letter “y” in employee, and adding the
generic top-level domain “.com.”
Numerous panels have held, and we agree, that such minor distinctions
are not sufficient to differentiate the domain name from the mark under Policy
¶ 4(a)(i). See
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks any rights to or legitimate interests in the <assurantemploeebenefits.com> domain name. Where Complainant makes out a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth evidence that it does possess rights to or legitimate interests in the disputed domain name. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has made out a prima facie case sufficient for purposes of the Policy, while Respondent, for its part, has failed to respond to the Complaint. In such circumstances, we are entitled to conclude that Respondent has no rights to or interests in the disputed domain name cognizable under the Policy. Nonetheless, we will examine the available evidence to determine if there is any basis in the record before us for concluding that Respondent has such rights or interests under the criteria set out in Policy ¶ 4(c).
We begin by observing that Complainant contends, and Respondent does not deny, that the <assurantemploeebenefits.com> domain name currently resolves to a website that contains no content. Without evidence of demonstrable preparations to use the disputed domain name, we can only conclude that Respondent’s inactive use of the domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that a respondent’s failure to develop a webs site around a disputed domain name demonstrates a lack of legitimate interest in the domain); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where a respondent did not provide any documentation of the existence of its alleged company that might show what its business was, or how the company’s period of existence, if it ever existed, might mesh with a complainant’s trademark claims).
Complainant also contends that Respondent is neither commonly known by the <assurantemploeebenefits.com> domain name nor authorized to register domain names featuring Complainant’s ASSURANT EMPLOYEE BENEFITS mark in any way. Respondent does not dispute this allegation. Therefore, and in the absence of evidence suggesting otherwise, we are constrained to conclude that Respondent has not established rights or legitimate interests in the contested domain name in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use a trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question).
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the disputed domain name in bad faith. It is undisputed on this record that the disputed domain name does not currently resolve to an active website. This, taken together with Respondent’s failure to respond to the Complaint, permits us to conclude that that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no active use of a domain name or of the website that connects with the domain name, and that such lack of use permits an inference of registration and use in bad faith).
In addition, it appears that Respondent registered the <assurantemploeebenefits.com> domain name with at least constructive knowledge of Complainant’s rights in the ASSURANT EMPLOYEE BENEFITS service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <assurantemploeebenefits.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 2, 2008
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