Liberty Mutual Insurance Company v. Randall Stevens
Claim Number: FA0908001280256
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse, of Liberty Mutual Insurance Company, New Hampshire, USA. Respondent is Randall Stevens (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <safecoinsureance.com>, <safecoinsurence.com>, <safecoinsuranse.com>, and <safecoinsurace.com>, registered with Dynadot, Dynadot, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 21, 2009.
On August 19, 2009 Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <safecoinsureance.com>, <safecoinsurence.com>, and <safecoinsurace.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 August 21, 2009 Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <safecoinsuranse.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 21, 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@safecoinsureance.com, postmaster@safecoinsurence.com, postmaster@safecoinsuranse.com, postmaster@safecoinsurace.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <safecoinsureance.com>, <safecoinsurence.com>, <safecoinsuranse.com>, and <safecoinsurace.com> domain names are confusingly similar to Complainant’s SAFECO mark.
2. Respondent does not have any rights or legitimate interests in the <safecoinsureance.com>, <safecoinsurence.com>, <safecoinsuranse.com>, and <safecoinsurace.com> domain names.
3. Respondent registered and used the <safecoinsureance.com>, <safecoinsurence.com>, <safecoinsuranse.com>, and <safecoinsurace.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, is a leader in providing insurance products. Complainant uses the SAFECO mark in association with its subsidiary company, Safeco Corporation. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SAFECO mark (Reg. No. 2,931,682 issued March 8, 2005).
Respondent registered the <safecoinsureance.com>
and
<safecoinsurence.com> domain names on May 21, 2008, and the <safecoinsuranse.com>
and <safecoinsurace.com> domain names on June 9, 2009. Respondent’s disputed domain names resolve to
websites offering third-party links to websites offering insurance products in
competition with Complainant.
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 owns a trademark registration for the SAFECO
mark with the USPTO (Reg. No. 2,931,682 issued March 8, 2005). The Panel finds that Complainant has
established rights in the SAFECO mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Thermo Electron Corp.
v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the
complainants had established rights in marks where the marks were registered
with a trademark authority); 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).
Respondent’s <safecoinsureance.com>, <safecoinsurence.com>, <safecoinsuranse.com>, and <safecoinsurace.com> domain names are confusingly similar to Complainant’s SAFECO mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names contain Complainant’s SAFECO mark in its entirety, add a misspelled version of the generic term “insurance,” and add the top-level domain (“gTLD”) “.com.” The Panel finds that adding generic terms with an obvious relationship to a complainant’s business operation creates a confusing similarity between the disputed domain name and the mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."). Therefore, Respondent’s disputed domain names are confusingly similar to Complainant’s SAFECO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain names. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case and Respondent has failed to submit a response in this proceeding. Nonetheless, the Panel will examine the record against the Policy requirements. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also 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.”).
Respondent is neither commonly known by, nor licensed to
register, the disputed
domain names. Respondent’s WHOIS
information identifies Respondent as “Randall Stevens.” The Panel finds that the WHOIS information
demonstrates that Respondent is not commonly known by the disputed domain
name. Therefore, pursuant to Policy ¶
4(c)(ii), Respondent lacks rights and legitimate interests in the disputed
domain names. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent registered the <safecoinsureance.com>
and
<safecoinsurence.com> domain names on May 21, 2008, and the <safecoinsuranse.com>
and <safecoinsurace.com> domain names on June 9, 2009. Respondent is using the disputed
domain names to display links advertising third-party websites offering
insurance products in competition with Complainant. The Panel infers that Respondent is using the
disputed domain names to earn click-through fees, and thus finds that
Respondent has not made 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 Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites 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) because the registrant presumably receives compensation for each
misdirected Internet user); see
also Coryn
Group, Inc. v. Media Insight, FA
198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain names to disrupt the business of Complainant by offering links to competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (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); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
In addition, Respondent is using the disputed domain names to intentionally divert Internet users to the associated website, which displays links to competing websites offering insurance products. The Panel assumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s mark and the disputed domain names. The Panel finds that this use of the disputed domain names is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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 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 <safecoinsureance.com>, <safecoinsurence.com>, <safecoinsuranse.com>, and <safecoinsurace.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 12, 2009
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