Assurant, Inc. v.
Claim Number: FA0910001290720
Complainant is Assurant, Inc. (“Complainant”), represented by Theresa
Conduah, of Alston & Bird LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <healthassurant.com> and <assuaranthealthsales.com>, registered with Compana, LLC.
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 October 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2009.
On October 23, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <healthassurant.com> and <assuaranthealthsales.com> domain names are registered with Compana, Llc and that Respondent is the current registrant of the names. Compana, Llc has verified that Respondent is bound by the Compana, 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 October 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@healthassurant.com and postmaster@assuaranthealthsales.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <healthassurant.com> and <assuaranthealthsales.com> domain names are confusingly similar to Complainant’s ASSURANT HEALTH mark.
2. Respondent does not have any rights or legitimate interests in the <healthassurant.com> and <assuaranthealthsales.com> domain names.
3. Respondent registered and used the <healthassurant.com> and <assuaranthealthsales.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Assurant, Inc., holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT HEALTH mark (e.g., Reg. No. 2,974,177 issued July 19, 2005) in connection with insurance and financial services.
Respondent, Texas International Property Associates – NA NA, registered the <healthassurant.com> and <assuaranthealthsales.com> domain names on November 2, 2005. The disputed domain name <healthassurant.com> resolves to an inactive website while the disputed domain name <assuaranthealthsales.com> resolves to a website that links to sites that offer insurance products and services that directly compete with Complainant.
Complainant contends that Respondent has been the respondent
in at least 254 other UDRP proceedings. See Assurant, Inc. v.
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 asserts rights in its ASSURANT HEALTH mark
through its holding of a trademark registration for the ASSURANT HEALTH mark
with the USPTO (Reg. No. 2,974,177 issued July 19, 2005). The Panel finds that Complainant has
established rights in the ASSURANT HEALTH mark under Policy 4(a)(i) through its trademark registration with the USPTO. See
Miller Brewing
Complainant argues
the Respondent’s <healthassurant.com>
and <assuaranthealthsales.com>
domain names are confusingly similar to Complainant’s ASSURANT HEALTH mark
pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names are
confusingly similar to Complainant’s ASSURANT HEALTH mark because Respondent’s
domain names incorporate Complainant’s ASSURANT HEALTH mark in its
entirety. The <healthassurant.com> domain name merely inverts the ASSURANT
HEALTH mark, while the <assuaranthealthsales.com>
domain name simply misspells the ASSURANT HEALTH mark and adds the descriptive
term “sales.” Both disputed domain names
also add the generic top-level domain name (“gTLD”) “.com.” The Panel finds that the inverting of words
creates confusing similarity between the disputed domain name <healthassurant.com> and
Complainant’s ASSURANT HEALTH mark. See Bloomberg
L.P. v. Herrington Hart, NIRT, FA 464790 (Nat.
Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words,
similar to transposed letters does not suffice to differentiate the disputed
domain name from Complainant’s mark to create a separate and distinct mark.”); see also Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5,
2003) (“Inverting or transposing words in a trademark is not sufficient to
avoid confusing similarity because the two words create the same commercial
impression and meaning.”). The Panel
also finds that misspelling and adding words to Complainant’s mark creates
confusing similarity between the disputed domain name and Complainant’s
mark. See
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The WHOIS information for each disputed domain name lists the registrant as “Texas International Property Associates – NA NA.” Respondent is not affiliated with, and is not licensed or permitted to use, Complainant’s marks. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent’s <healthassurant.com>
and <assuaranthealthsales.com>
domain names were registered on November 2, 2005. The disputed domain name <healthassurant.com> resolves to an inactive website. The Panel finds Respondent’s failure to make
an active use of the domain name is evidence that Respondent lacks any
legitimate interests or rights in the disputed domain name. See
Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004) (“Respondent
is wholly appropriating Complainant’s mark and is not using the
<bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an
active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or
legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶
4(c)(iii) where it failed to make any active use of the domain name).
The disputed domain name <assuaranthealthsales.com> resolves to a website that links to sites that offer insurance products and services that directly compete with Complainant. The Panel presumes that Respondent is profiting through the receipt of click-through fees by operating this website. Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or making a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has been the respondent
in at least 254 other UDRP proceedings. See Assurant, Inc. v.
The Panel finds that Respondent’s registration and use of
the <assuaranthealthsales.com> domain name to link Internet
users to a website featuring third-party links which are in competition with
Complainant constitutes a disruption of Complainant’s business and constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum
Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Respondent
is using the confusingly similar <assuaranthealthsales.com> to
redirect Internet users to a website featuring third-party links, some of which
are in direct competition with Complainant, presumably for Respodent’s personal
financial gain. The Panel finds
Respondent’s use of the disputed domain name is evidence of bad faith
registration and use under Policy ¶ (4)(b)(iv).
See
Respondent is not making an active use of the confusingly
similar <healthassurant.com> domain name. The Panel finds Respondent’s failure to make
an active use over a period of four years is sufficient to support a finding of
bad faith registration and use under Policy ¶ 4(a)(iii). See
Mondich v. Brown, D2000-0004
(WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its
website in a two year period raises the inference of registration in bad
faith); see also Am. Broad. Cos., Inc. v. Sech,
FA 893427 (Nat. Arb. Forum Feb. 28,
2007) (concluding that the respondent’s failure to make active use of its
domain name in the three months after its registration indicated that the
respondent registered the disputed domain name in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <healthassurant.com> and <assuaranthealthsales.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 8, 2009
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