Unum Group v. Youngmi Pak
Claim Number: FA0808001221818
Complainant is Unum Group (“Complainant”), represented by Anthony
C. Martin, of Husch Blackwell Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <unum.net>, registered with Onlinenic, 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 August 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 25, 2008.
On August 26, 2008, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <unum.net> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the names. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 September 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 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@unum.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 7, 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 <unum.net> domain name is identical to Complainant’s UNUM mark.
2. Respondent does not have any rights or legitimate interests in the <unum.net> domain name.
3. Respondent registered and used the <unum.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Unum Group, is an award-winning insurance
provider of disability, life, accidental health, and dismemberment
insurance. Complainant operates its
business using the UNUM mark, which it registered with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,077,150 issued July 8, 1997).
Respondent registered the <unum.net> domain name on September 9, 2005, and uses it to display advertisements for Complainant’s competitors.
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 asserts rights in the UNUM mark (Reg. No. 2,077,150 issued July 8, 1997 by the United States Patent and Trademark Office (“USPTO”)). Therefore, the Panel finds that Complainant has sufficient rights in the mark through this registration under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that the UNUM mark is identical to the <unum.net> domain name. The
Panel finds accordingly under Policy ¶ 4(a)(i).
See Katadyn N. Am. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. The Panel finds that Complainant has established a prima facie case based on the allegations in the Complaint. While Respondent has failed to respond to these proceedings, the Panel chooses to examine the evidence against the Policy ¶ 4(c) elements. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel finds that the WHOIS information lists Respondent as “Youngmi Pak.” Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant also alleges that Respondent’s disputed domain name resolves to a website that features “click-through” advertisements to third-party websites designed to create commercial gain for Respondent. Complainant asserts that these advertisements lead to Complainant’s direct competitors. The Panel finds that Respondent has not created 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 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.
Complainant argues that Respondent’s use of competitive advertisements on the corresponding website has created a disruption of Complainant’s business. The Panel agrees, and accordingly finds that Respondent 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); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant asserts that Respondent’s use of the allegedly
identical disputed domain name was intentional in that it created a likelihood
of confusion for commercial gain as to Complainant’s source, sponsorship,
affiliation, and endorsement of Respondent’s disputed domain name and
corresponding website. The Panel
concurs, and finds that Respondent engaged in bad faith registration and use
under Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on
its website and offering identical services as those offered by the
complainant); see also Identigene, Inc.
v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site).
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 <unum.net> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 21, 2008
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