Assurant, Inc. v. Forsyte Corporation
Claim Number: FA0807001216476
Complainant is Assurant, Inc. (“Complainant”), represented by Brian M. Davis, of Alston & Bird, LLP, North Carolina, USA. Respondent is Forsyte Corporation (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurantlife.com>, registered with Availabledomains.ca.
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 July 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2008.
On July 22, 2008, Availabledomains.ca confirmed by e-mail to the National Arbitration Forum that the <assurantlife.com> domain name is registered with Availabledomains.ca and that Respondent is the current registrant of the name. Availabledomains.ca has verified that Respondent is bound by the Availabledomains.ca 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").
1, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 21, 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 29, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <assurantlife.com> domain name is confusingly similar to Complainant’s ASSURANT mark.
2. Respondent does not have any rights or legitimate interests in the <assurantlife.com> domain name.
3. Respondent registered and used the <assurantlife.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Assurant, Inc., is a Delaware corporation that has operated since 1999 in the insurance industry. Complainant markets itself under the ASSURANT mark (Reg. No. 2,543,367 issued February 26, 2002), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <assurant.com> domain name in conjunction with its operations.
Respondent registered the <assurantlife.com> domain name on December 30, 2006. The disputed domain name does not currently lead to any operating website.
Respondent has also been the respondent in other UDRP decisions wherein the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Fireman’s Fund Ins. Co. v. Forsyte Corp., FA 1055246 (Nat. Arb. Forum Sept. 17, 2007); see also Citizens Fin. Group, Inc. v. Forsyte Corp., FA 1086584 (Nat. Arb. Forum Nov. 12, 2007).
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 registration of the ASSURANT mark with the USPTO confers sufficient rights in the mark upon Complainant for UDRP standing purposes under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
Respondent’s <assurantlife.com> domain name incorporates Complainant’s ASSURANT mark while adding the generic word “life” and the generic top-level domain “.com.” The addition of the top-level domain is irrelevant under Policy ¶ 4(a)(i) since every registered domain name requires one. The generic word “life” refers to part of Complainant’s business, in that Complainant sells life insurance. Descriptive word additions generally fail to distinguish a disputed domain name under Policy ¶ 4(a)(i). However, even if the word was merely generic and unrelated to the mark, it would still fail to differentiate the disputed domain name since the dominant feature of the domain name remains Complainant’s mark. In either event, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Based on the evidence in the record, the Panel finds that Complainant has set forth a prima facie case, and thus Respondent bears the burden of demonstrating that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also 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.”).
There is no evidence within the record to suggest that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information lists Respondent as “Forsyte Corporation,” and that Respondent has failed to respond to Complainant’s allegations. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent’s disputed domain name does not currently resolve to an active website. The Panel finds that Respondent’s inactive use of the disputed domain name demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), in that Respondent has not shown any actual use or demonstrable preparations to use the disputed domain name in a bona fide offering or goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [inactive] holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.”).
The Panel finds that Policy ¶ 4(a)(ii has been satisfied.
Respondent has been the respondent in previous UDRP decisions wherein the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Fireman’s Fund Ins. Co. v. Forsyte Corp., FA 1055246 (Nat. Arb. Forum Sept. 17, 2007); see also Citizens Fin. Group, Inc. v. Forsyte Corp., FA 1086584 (Nat. Arb. Forum Nov. 12, 2007). The Panel finds that these previous decisions demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s disputed domain name does not resolve to an active website. The Panel finds that this inactive holding of the disputed domain name constitutes further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
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 <assurantlife.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 9, 2008
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