Assurant, Inc. v. UAE Investments Company, Ltd.
Claim Number: FA0901001244200
Complainant is Assurant,
Inc. (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <assurantarabia.com> and <assurantplus.com>, registered with Network Solutions, LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 29, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of February 18, 2009
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@assurantarabia.com and postmaster@assurantplus.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <assurantarabia.com> and <assurantplus.com> domain names are confusingly similar to Complainant’s ASSURANT mark.
2. Respondent does not have any rights or legitimate interests in the <assurantarabia.com> and <assurantplus.com> domain names.
3. Respondent registered and used the <assurantarabia.com> and <assurantplus.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides insurance and financial services under
the ASSURANT mark, which Complainant registered with the United States Patent
and Trademark Office (“USPTO”) on
Respondent registered the <assurantarabia.com> and <assurantplus.com>
domain names on
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 has established rights in
the ASSURANT mark though its registration with the USPTO. See Miller Brewing
Complainant contends that
Respondent’s <assurantarabia.com> domain name is confusingly similar to its ASSURANT mark. The <assurantarabia.com> domain name differs from Complainant’s mark in two ways:
the geographically descriptive term “arabia” has been added to the mark, and
the generic top-level domain (“gTLD”) “.com” has also been added to the
mark. The Panel agrees with previous
decisions that a geographically descriptive term will not distinguish a domain
name from a mark. See Skype Ltd. &
Gannett Co. v. Chan, D2004-0117 (WIPO
Complainant also contends that
Respondent’s <assurantplus.com> domain name is confusingly similar to its ASSURANT mark. The <assurantplus.com> domain name differs from Complainant’s mark in two ways:
the generic term “plus” has been added to the mark, and the generic top-level
domain (“gTLD”) “.com” has also been added to the mark. The Panel concludes that a generic term generally
does not distinguish a domain name from a mark.
See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the disputed
domain names. Under Policy ¶
4(a)(ii), after the complainant makes a prima
facie case against the respondent, the respondent then has the burden of
showing evidence that it does have rights or legitimate interests in the
disputed domain name. The Panel finds
that Complainant has made a prima facie
case under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first
make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and
then the burden shifts to [the] respondent to show it does have rights or
legitimate interests.”); see also SEMCO Prods., LLC v. dmg world media (
Complainant contends that Respondent is not commonly known
by the disputed domain names,
nor has it ever been the owner or licensee of the ASSURANT mark. The WHOIS record for the disputed domain name
lists Respondent as “UAE Investments Company, Ltd.” Because of the lack of evidence that
Respondent has ever been known by any variant on Complainant’s ASSURANT mark,
along with the fact that Respondent has failed to show any evidence contrary to
Complainant’s contentions, the Panel finds that Respondent is not commonly
known by the disputed domain names pursuant
to Policy ¶ 4(c)(ii). See Reese
v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name); see also Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent maintains a website at the disputed domain names that merely contains the message that the website is “coming soon.” The lack of substantive content on the website that resolves from the disputed domain names implies that Respondent has never made active use of the disputed domain names, and therefore, the Panel finds that this non-use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out); see also Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s failure to provide
any substantive content on the website that resolves from the disputed domain
names and thereby make an active use of the domain names is evidence that
Respondent registered and is using the disputed domain names in bad faith. The Panel agrees
and finds that Respondent has failed to make any active use of the <assurantarabia.com>
and <assurantplus.com>
domain names, which the Panel holds is evidence that Respondent has registered
and used the disputed domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb.
Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active
use of its domain name in the three months after its registration indicated
that the respondent registered the disputed domain name in bad faith); see
also Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the
respondent’s decision not to make active use of the disputed domain name,
“Respondent has made its intention clear and the continuing threat hanging over
the Complainant’s head constitutes bad faith 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 <assurantarabia.com> and <assurantplus.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin , Panelist
Dated: March 10, 2009
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