Assurant, Inc. v. Charlie Chang
Claim Number: FA0909001285683
Complainant is Assurant, Inc. (“Complainant”), represented by Theresa
Conduah, of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <assurantdiect.com> and <asurantdirect.com>, registered with Enom, Inc.
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 September 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 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@assurantdiect.com and postmaster@asurantdirect.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 <assurantdiect.com> and <asurantdirect.com> domain names are confusingly similar to Complainant’s ASSURANT mark.
2. Respondent does not have any rights or legitimate interests in the <assurantdiect.com> and <asurantdirect.com> domain names.
3. Respondent registered and used the <assurantdiect.com> and <asurantdirect.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Assurant, Inc., operates a business providing
insurance and financial services under its ASSURANT mark, which it has
registered with the United States Patent and Trademark Office (“USPTO”) on
Respondent, Charlie Chang, registered the disputed domain
name
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.
Respondent, Charlie Chang, registered the disputed domain
name
Complainant has provided evidence of the registration of its
ASSURANT mark with the USPTO (Reg. No. 2,543,367 issued
Complainant asserts the disputed domain names each contain
Complainant’s ASSURANT mark, correctly or incorrectly spelled. The disputed domain names also contain the
generic term “direct,” correctly or incorrectly spelled and the generic
top-level domain “.com.” The Panel finds
these alterations do not sufficiently differentiate the disputed domain names
from Complainant’s mark under Policy ¶ 4(a)(i).
Thus, the Panel finds the disputed domain names are confusingly similar
to Complainant’s ASSURANT mark. See Pfizer
Inc. v. BargainName.com, D2005-0299
(WIPO
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <assurantdiect.com> and <asurantdirect.com> domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii) and the burden of proof shifts to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The WHOIS domain name registration information for the <assurantdiect.com> and <asurantdirect.com>
domain names lists the registrant as “Charlie Chang” which does not reflect any
similarity to the disputed domain names.
In addition, Complainant has stated Respondent is not licensed or
otherwise authorized to use Complainant’s ASSURANT mark. Therefore, based on the evidence present in
the record, the Panel concludes that Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain names to display links to websites offering various third-party links in competition with Complainant. Thus, Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), and is not legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain names to offer links to third-party websites displaying competing insurance and financial services disrupts Complainant’s business. The Panel finds this disruption demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors in the financial services industry).
Respondent is using the confusingly similar <assurantdiect.com> and <asurantdirect.com>
domain names to presumably collect profits through the receipt of click-through
fees for the third-party competing links displayed on the resolving
websites. Internet users may become
confused as to whether the resolving content is sponsored, endorsed by, or
affiliated with Complainant and its ASSURANT mark. The Panel finds Respondent’s attempt to
profit from this confusion is evidence of registration and use of the disputed
domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
Asbury Auto. Group, Inc. v.
The Panel finds 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 <assurantdiect.com> and <asurantdirect.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 30, 2009
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