national arbitration forum

 

DECISION

 

Assurant, Inc. v. UAE Investments Company, Ltd.

Claim Number: FA0808001220828

 

PARTIES

Complainant is Assurant, Inc. (“Complainant”), represented by Brian M. Davis of Alston & Bird, LLP, North Carolina, USA.  Respondent is UAE Investments Company, Ltd. (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <menaassurant.com>, registered with Namesecure.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint August 18, 2008.

 

On August 18, 2008, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <menaassurant.com> domain name is registered with Namesecure.com and that Respondent is the current registrant of the name.  Namesecure.com verified that Respondent is bound by the Namesecure.com registration agreement and thereby has 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 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 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@menaassurant.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 16, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name Respondent registered, <menaassurant.com>, is confusingly similar to Complainant’s ASSURANT mark.

 

2.      Respondent has no rights to or legitimate interests in the <menaassurant.com> domain name.

 

3.      Respondent registered and used the <menaassurant.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Assurant, Inc., is a well-known provider of insurance and financial services.  Complainant registered the ASSURANT mark for business management and insurance underwriting services with the United States Patent and Trademark Office (“USPTP”)(Reg. No. 2,543,367 issued Feb. 26, 2002). 

 

Respondent registered the disputed domain name, <menaassurant.com>, April 20, 2006, and it resolves to a website displaying only the words “coming soon.”  Respondent has also been the subject of at least one prior UDRP proceeding in which the disputed domain name was ordered transferred from Respondent.  See Diners Club Int’l Ltd. v. UAE Inv. Co. Ltd., FA 797553 (Nat. Arb. Forum Oct. 23, 2006). 

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant established rights in the ASSURANT mark through registration with the USPTO pursuant to 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark.  This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).

 

The <menaassurant.com> domain name contains Complainant’s ASSURANT mark in its entirety followed by the generic top-level domain (“gTLD”) “.com.”  A gTLD is typically considered irrelevant to a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  The disputed domain name also precedes the ASSURANT mark with the term “mena.”  Complainant contends that “mena” is actually an acronym “M.E.N.A.” and stands for the geographic region “Middle East and North Africa.”  Without any contradiction in the evidence, the Panel accepts Complainant’s contention as true for the purposes of Policy ¶ 4(a)(i).  A geographic term included in a disputed domain name does not serve to distinguish that disputed domain name.  See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).  For all of the aforementioned reasons, the Panel finds that the <menaassurant.com> domain name is confusingly similar to Complainant’s ASSURANT mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel concludes that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Before a UDRP panel may proceed in its analysis to consider Policy ¶ 4(a)(ii), a complainant must first establish a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant made a prima facie showing against Respondent and that, accordingly, the burden shifted to Respondent to demonstrate its rights to or legitimate interests in the disputed domain name.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).

 

Complainant failed to reply to the Complaint.  Therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel accepts as true all of Complainant’s contentions unless clearly contradicted by the evidence.  As a result, the Panel examines the record in consideration of the elements listed under Policy ¶ 4(c).  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Complainant asserts that Respondent registered the disputed domain name containing its ASSURANT mark without permission or authorization.  Additionally, the WHOIS information listed nothing but “NameSecure.com” as the contact information for the disputed domain name.  Upon initiation of this dispute, it was disclosed that Respondent, under the alias “UAE Investment Company,” owns the disputed domain name.  Without any additional information, the Panel declines to find that Respondent is or ever was commonly known by the <menaassurant.com> domain name pursuant to 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 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).

 

The <menaassurant.com> domain name resolves to a website displaying nothing but the phrase “coming soon.”  The Panel finds that this is a passive holding of the disputed domain name and therefore constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [inactive use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).

 

The Panel concludes that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has been involved in at least one other UDRP proceeding, in which the disputed domain name was ordered transferred from Respondent.  See Diners Club Int’l Ltd. v. UAE Inv. Co. Ltd., FA 797553 (Nat. Arb. Forum Oct. 23, 2006).  Previous panels have held that where a prior proceeding exists in which a panel has ordered the transfer of a disputed domain name from the respondent, a pattern of registering infringing disputed domain names may be presumed to support findings of a respondent’s bad faith.  See 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 prior UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also 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”).  The Panel finds that the prior UDRP proceeding against Respondent permits a presumption that Respondent registered and is using the <menaassurant.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). 

 

Additionally, the <menaassurant.com> domain name resolves to a website displaying nothing but the phrase “coming soon.”  The Panel finds this to constitute an inactive use or passive holding of the disputed domain name.  Without other evidence in the record, the Panel finds this to be further evidence of Respondent’s bad faith registration and use pursuant to 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 concludes that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

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 <menaassurant.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: September 30, 2008.

 

 

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