IMT Services Corp. v. All Travel Insurance Services, LLC c/o Scott Weinbrand
Claim Number: FA0904001259982
Complainant is IMT Services Corp. (“Complainant”), represented by Fritz
L. Schweitzer III, of St. Onge Steward Johnston & Reens LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <insurealltrips.com>, registered with Uk2 Group Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 29, 2009.
On April 30, 2009, Uk2 Group Ltd. confirmed by e-mail to the National Arbitration Forum that the <insurealltrips.com> domain name is registered with Uk2 Group Ltd. and that Respondent is the current registrant of the name. Uk2 Group Ltd. has verified that Respondent is bound by the Uk2 Group Ltd. 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 May
8, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 28, 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@insurealltrips.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <insurealltrips.com> domain name is confusingly similar to Complainant’s INSURE MY TRIP mark.
2. Respondent does not have any rights or legitimate interests in the <insurealltrips.com> domain name.
3. Respondent registered and used the <insurealltrips.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers insurance services under the INSURE MY TRIP mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on October 18, 2005 (Reg. No. 3,007,162). Complainant has offered its services under the INSURE MY TRIP mark since at least as early as 2000, and has received favorable attention from the press and from others in the travel insurance field.
Respondent registered the <insurealltrips.com> domain name on January 2, 2007. the disputed domain name resolves to a website that advertises services which are in competition with Complainant’s services.
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 sufficient rights in the INSURE MY TRIP mark through registration
of the mark with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s
<insurealltrips.com> domain name is confusingly similar to its INSURE MY
TRIP mark. The
<insurealltrips.com> domain name differs from Complainant’s mark in four ways:
(1) the term “all” has replaced the term “my” in the mark; (2) the spaces have
been removed from the mark; (3) the letter “s” has been added to the end of the
mark; and (4) the generic top-level domain (gTLD) “.com” has been added to the
mark. The Panel finds that replacing a
term with another term, neither of which is the distinctive part of the mark, is
not sufficient to distinguish a domain name from a mark pursuant to Policy ¶
4(a)(i). See Am. Eagle
Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005)
(finding the <americaneaglestores.com> domain name to be confusingly
similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The
Panel finds that removing spaces and adding a letter “s” are also insufficient
to distinguish a domain name from a mark it incorporates. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725
(WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was
confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the
domain name simply lacked the letter “s”). Finally, the Panel finds that the addition of the gTLD “.com” does not sufficiently distinguish
a domain name from the incorporated mark for the purposes of Policy ¶
4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding
that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶
4(a)(i) analysis). Therefore,
the Panel finds that because the changes to the mark do not sufficiently
distinguish the disputed domain name from Complainant’s mark, Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <insurealltrips.com> domain name. 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), and that Respondent has failed to submit a Response. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent is not commonly known
by the <insurealltrips.com>
domain name nor has it ever been the owner or licensee of the INSURE MY TRIP
mark. The WHOIS listing for the disputed
domain name lists Respondent as “All Travel
Insurance Services, LLC c/o Scott Weinbrand,” and Respondent has failed
to present any evidence that is contrary to Complainant’s contentions. Because there is no evidence that Respondent
has ever been known by any variant on the INSURE MY TRIP mark, the Panel
therefore finds that Respondent is not commonly known by the <insurealltrips.com> domain name pursuant to Policy ¶
4(c)(ii). See 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.”); see also Ian Schrager Hotels, L.L.C.
v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without
demonstrable evidence to support the assertion that a respondent is commonly
known by a domain name, the assertion must be rejected).
Complainant contends
that Respondent is providing services that compete with Complainant’s business
at the website that resolves from the <insurealltrips.com>
domain name. Previous panels have found that using a
domain name to advertise services that compete with the holder of a mark which
that domain name incorporates is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use of the <insurealltrips.com> domain name under Policy ¶ 4(c)(iii). See
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum
Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name
to redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services). The Panel therefore finds that Respondent’s competing
use of the <insurealltrips.com> domain name is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <insurealltrips.com>
domain name under Policy
¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is intentionally
disrupting Complainant’s business by diverting Internet users to Respondent’s
own competing website, through those Internet users’ confusion between
Complainant’s mark and the disputed domain name. The Panel finds that Respondent’s disruption
of Complainant’s business is evidence that Respondent has registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan,
FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that
the respondent’s registration of a domain name substantially similar to the
complainant’s AMERICAN SINGLES mark in order to operate a competing online
dating website supported a finding that respondent registered and used the
domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Instron
Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that
the respondent registered and used the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate
websites that compete with the complainant’s business).
Complainant also contends that Respondent is gaining commercially from providing competing services on the website that resolves from the <insurealltrips.com> domain name. The Panel finds that Respondent’s commercial gain from the use of the disputed domain name is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
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 <insurealltrips.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 29, 2009
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