Pacific Life Insurance Company and Pacific Life and Annuity Company v. Transure Enterprise Ltd.
Claim Number: FA0807001218169
Complainant is Pacific
Life Insurance Company and Pacific
Life and Annuity Company (“Complainant”), represented by Julia C. McKinney, of Pacific Life Insurance Company, California, USA. Respondent is Transure Enterprise Ltd. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myaccountpacificlife.com>, registered with Above, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2008.
On July 31, 2008, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <myaccountpacificlife.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 August 11, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of September 2, 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@myaccountpacificlife.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <myaccountpacificlife.com> domain name is confusingly similar to Complainant’s PACIFIC LIFE mark.
2. Respondent does not have any rights or legitimate interests in the <myaccountpacificlife.com> domain name.
3. Respondent registered and used the <myaccountpacificlife.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Pacific Life Insurance Company and Pacific Life and Annuity Company (hereafter referred to collectively as “Complainant”), has provided life insurance, annuities, mutual funds, and other investment products and services to individuals, businesses, and pension plans throughout the United States. Founded in 1868, Complainant has amassed over $99 billion in assets. Complainant operates under the PACIFIC LIFE mark (Reg. No. 2,168,494 issued June 23, 1998 by the United States Patent and Trademark Office (“USPTO”)), and owns and operates the <pacificlife.com> and <pacificlifeandannuity.com> domain names.
Respondent, Transure Enterprise Ltd., registered the disputed <myaccountpacificlife.com> domain name on July 23, 2008. The disputed domain name is currently used to host third-party advertisements for Complainant’s direct competitors in the insurance and investment industries.
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.
Complainant has submitted evidence of its USPTO trademark
registration for its PACIFIC LIFE mark. In Metropolitan Life Insurance Company v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel held that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)). Similarly, the panel in VICORP
Restaurants, Inc. v. Triantafillos,
FA 485933 (Nat. Arb. Forum July 14,
2005) found that “[c]omplainant has established rights in the
Respondent’s <myaccountpacificlife.com> domain name includes Complainant’s entire PACIFIC LIFE mark, while adding the generic phrase “my account,” and the generic top-level domain “.com.” In regards to the top-level domain, the Panel aligns itself with the panel in Jerry Damson, Inc. v. Texas International Property Associates, FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) in holding that such an addition carries no relevance under a Policy ¶ 4(a)(i) analysis. As such, the Panel is left to scrutinize the significance of the phrase “my account.” In L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000), the panel founds that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy. Moreover, the panel in Allianz of America Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) held that the additions of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i). In this case, the phrase “my account” reasonably describes the provision of customer accounts through Complainant’s investment and finance business. Therefore, the disputed domain name not only contains the dominant element of the PACIFIC LIFE mark, but the generic phrase accompanying the mark actually relates to the mark itself. Therefore, the Panel finds that the <myaccountpacificlife.com> domain name is confusingly similar to the PACIFIC LIFE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <myaccountpacificlife.com> domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests under 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 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).”).
Respondent has not responded to the Complaint. While the Panel chooses to consider the evidence in the record despite this default situation, the Panel does note that Respondent has not leveled any rebuttal upon Complainant’s assertions, leaving them unchallenged and therefore dominant within the record. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). As to whether Respondent is commonly known by the disputed domain name, the Panel’s discretion is to accept Complainant’s unchallenged but evidenced assertions as true. Complainant claims no authority or license for Respondent to use the PACIFIC LIFE mark in any form, and asserts that Respondent has no business commonly known by the disputed domain name. The Panel notes that the submitted WHOIS records list Respondent as “Transure Enterprise Ltd.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant has asserted that “Respondent does not offer any bona fide goods or services.” As supporting evidence, Complainant submits screenshots of the resolving website, wherein third-party advertisements for Complainant’s direct competitors are shown. Complainant asserts, and the Panel so infers, that Respondent conducts this activity for commercial gain, through the receipt of click-through fees. The Panel finds this use to fail as 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel agrees with Complainant’s contention that Respondent’s use of the disputed domain name and corresponding website to host competitive third-party advertisements disrupts Complainant’s business. It need not matter that Complainant and Respondent are not direct competitors. 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”). Instead, it is sufficient that Respondent’s actions will cause Internet users to be rerouted to an advertising haven for Complainant’s actual direct competitors, which in turn causes the disruption. The Panel therefore finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant also asserts that Respondent has intentionally
created a likelihood of confusion for commercial gain as to Complainant’s
source and endorsement of the disputed domain name and resolving website. The Panel has already inferred the receipt of
click-through fees for this advertising venture. The Panel therefore finds that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See
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 <myaccountpacificlife.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 24, 2008
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