national arbitration forum

 

DECISION

 

Assurant, Inc. v. Mike Morgan

Claim Number: FA0903001253366

 

PARTIES

Complainant is Assurant, Inc. (“Complainant”), represented by Theresa Conduah of Alston & Bird, LLP, North Carolina, USA.  Respondent is Mike Morgan (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <assurancesolutions.com>, registered with Spot Domain Llc.

 

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 March 20, 2009; the National Arbitration Forum received a hard copy of the Complaint March 25, 2009.

 

On March 20, 2009, Spot Domain Llc confirmed by e-mail to the National Arbitration Forum that the <assurancesolutions.com> domain name is registered with Spot Domain Llc and that Respondent is the current registrant of the name.  Spot Domain Llc verified that Respondent is bound by the Spot Domain Llc 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 March 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@assurancesolutions.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 22, 2009, 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 that Respondent registered, <assurancesolutions.com>, is confusingly similar to Complainant’s ASSURANT SOLUTIONS mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Assurant, Inc., holds a trademark registration for the ASSURANT SOLUTIONS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,308,104 issued Oct. 9, 2007).  Complainant uses its ASSURANT SOLUTIONS mark in connection with its insurance and financial services business.

 

Respondent acquired the <assurancesolutions.com> domain name registration February 29, 2008.  The disputed domain name resolves to a website displaying links to third-party websites, some of which directly compete with Complainant.

 

Respondent has been the respondent in other cases through the National Arbitration Forum in which disputed domain names were transferred from Respondent to the respective complainants in those cases.  See, e.g., Reed Elsevier Inc. v. Morgan, FA 709198 (Nat. Arb. Forum Aug. 1, 2006); see also Anheuser-Busch, Inc. v. Morgan, FA 785495 (Nat. Arb. Forum Oct. 9, 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 finds to be 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.

 

Preliminary Issue: Relevant Date of Respondent’s Registration

 

The WHOIS information reflects that the <assurancesolutions.com> domain name was created December 16, 1999; however, Complainant contends that Respondent did not acquire the disputed domain name until February 29, 2008.  The historical WHOIS information reflects that the disputed domain name was originally registered and held by other third parties.  The WHOIS information showing Respondent as the registrant dates to February 29, 2008.  The Panel finds the relevant date for Respondent’s registration of the disputed domain name for purposes of analysis under the Policy is February 29, 2008.  See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (Although the disputed domain name had been created prior to the complainant obtaining rights in the mark at issue, the panel found the complainant’s rights to predate the respondent’s registration because the disputed domain name had been transferred to the respondent only a month prior to the proceeding.  “Therefore, one only needs to trace the registration date back to the most recent transfer instead of the original registration.”); see also BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it.).

 

Identical to and/or Confusingly Similar

 

The Panel finds that Complainant established rights in the ASSURANT SOLUTIONS mark pursuant to Policy ¶ 4(a)(i) via its trademark registration with the USPTO.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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).

 

The <assurancesolutions.com> domain name contains a variation of Complainant’s ASSURANT SOLUTIONS mark, and the generic top-level domain (gTLD) “.com.”  The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  The <assurancesolutions.com> domain name changes Complainant’s ASSURANT SOLUTIONS mark by omitting the letter “t” and adding a “ce,” changing the word “assurant” to “assurance;” both words derive from the same root word “assure.”  Additionally the <assurancesolutions.com> domain name is phonetically similar to Complainant’s ASSURANT SOLUTIONS mark.  The Panel finds that the <assurancesolutions.com> domain name is confusingly similar to Complainant’s ASSURANT SOLUTIONS mark pursuant to Policy ¶ 4(a)(i).  See Hotwire, Inc. v. Wilder, FA 741901 (Nat. Arb. Forum Aug. 7, 2006) (finding the <heatwire.com> domain name to be confusingly similar to the complainant’s HOTWIRE.COM mark, as the disputed domain name was pronounced similarly to the complainant’s mark and was also a misspelled variation of it); see also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”).

 

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

 

Rights to or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <assurancesolutions.com> domain name.  Once Complainant makes such a prima facie showing, the burden to show rights shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations establish a prima facie case showing that Respondent has no rights to or legitimate interests in the <assurancesolutions.com> domain name pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  However, this Panel examines the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <assurancesolutions.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the ASSURANT SOLUTIONS mark, and the WHOIS information identifies Respondent as “Mike Morgan.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Respondent is using the <assurancesolutions.com> domain name to resolve to a website containing links to third-party websites, some of which directly compete with Complainant.  Accordingly, the Panel is permitted to make an inference that Respondent receives click-through fees for displaying these hyperlinks.  The Panel finds that this constitutes a diversion of Internet users for Respondent’s commercial benefit, and therefore is 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).  See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also 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).”).

 

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

 

Registration and Use in Bad Faith

 

Respondent has been named as respondent in other cases in which the disputed domain names were transferred from Respondent to the respective complainants in those cases. See, e.g., Reed Elsevier Inc. v. Morgan, FA 709198 (Nat. Arb. Forum Aug. 1, 2006); see also Anheuser-Busch, Inc. v. Morgan, FA 785495 (Nat. Arb. Forum Oct. 9, 2006).  The Panel finds Respondent has engaged in a pattern of registering infringing domain names, amounting to bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); 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”).

 

Additionally, Respondent is using the <assurancesolutions.com> domain name to resolve to a website containing links to third-party websites, some of which directly compete with Complainant.  The Panel finds Respondent is using the <assurancesolutions.com> domain name to disrupt Complainant’s business by diverting Internet users to Complainant’s competitors.  This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Finally, the website resolving from the <assurancesolutions.com> domain name displays links to sites that are related to, and in direct competition with, Complainant’s business.  The Panel makes an inference that Respondent receives either pay-per-click fees for hosting these links.  Since the disputed domain name is confusingly similar to Complainant’s mark, Internet users are likely to be confused as to Complainant’s affiliation or sponsorship of the disputed domain name and resolving website.  The Panel finds this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds 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 <assurancesolutions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: May 6, 2009.

 

 

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