Esurance Inc. v. Anatoly Abramov
Claim Number: FA0906001265682
Complainant is Esurance
Inc. (“Complainant”), represented by Todd
A. Noah, of Dergosits & Noah LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <esurance.mobi>, registered with 1&1 Internet AG.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 2, 2009.
On June 2, 2009, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <esurance.mobi> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 June 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding setting a deadline of June 24, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is an automobile insurance provider which operates almost entirely online.
Complainant owns multiple mark registrations with the United States Patent and Trademark Office (“USPTO”) for its ESURANCE mark (including for service mark Reg. No. 2,854,154, issued June 15, 2004).
Complainant has never authorized or licensed Respondent to use the ESURANCE mark.
Respondent registered the <esurance.mobi> domain name on December 29, 2008.
The disputed domain name resolves to an inactive website.
Respondent’s <esurance.mobi> domain name is identical to Complainant’s ESURANCE mark.
Respondent does not have any rights to or legitimate interests in the <esurance.mobi> domain name.
Respondent registered and uses the <esurance.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
registered the ESURANCE service mark with the USPTO. Registration of a mark with the USPTO is
sufficient to establish Complainant’s rights under Policy ¶ 4 (a)(i). Therefore,
Complainant has established rights in the ESURANCE mark. See Metro. Life Ins. Co.
v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (finding that a mark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)); see also Reebok Int’l Ltd. v.
Respondent’s <esurance.mobi> domain name is identical to Complainant’s ESURANCE service mark except for the addition of the generic top-level domain “.mobi.” The addition of a top-level domain name is irrelevant in a Policy ¶ 4(a)(i) analysis. See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007):
The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.
See also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant has alleged prima facie that Respondent does not have any rights to or legitimate interests in the <esurance.mobi> domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). 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.
Complainant has made a sufficient showing of a prima facie case. Respondent’s failure to respond to the Complaint thus allows the Panel to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because a respondent failed to submit a Response,
Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.
We will nonetheless examine the record before us to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the criteria set out in Policy ¶ 4(c).
We begin by noting that there is no dispute as to Complainant’s allegation that Respondent’s <esurance.mobi> domain name does not resolve to an active website. Failure to make any active use of a domain does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See, for example, Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests under the Policy where a respondent failed to submit a response to a complaint and had made no use of the domain name there in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)).
We also observe that Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <esurance.mobi> domain name. Similarly, Respondent does not dispute Complainant’s assertion that Respondent has never been authorized or licensed to use the ESURANCE service mark. Moreover, the pertinent WHOIS information identifies Respondent only as “Anatoly Abramov.” Therefore, we conclude that Respondent has not established rights to or legitimate interests in the <esurance.mobi> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests in a disputed domain name where a respondent was not commonly known by the mark there is question and never applied for a license or permission from a complainant to use a trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that there was “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that, although the contested domain name
was registered in December of 2008, it still does not resolve to an active
website. In the circumstances here presented, Respondent’s
failure to make active use of the disputed domain name over such an extended
period is evidence of bad faith registration and use of the domain pursuant to
for example, Pirelli & C. S.p.A. v.
In addition, from the substantive identity of the contested domain with the competing service mark, it appears that Respondent registered the <esurance.mobi> domain name with at least constructive knowledge of Complainant’s rights in the ESURANCE mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar or identical domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been fulfilled.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <esurance.mobi> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 13, 2009
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