Liberty Mutual Insurance Company v. Kanter Associates SA a/k/a Admin
Claim Number: FA0912001299743
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse, Portsmouth, New
Hampshire, United States of America.
Respondent is Kanter Associates
SA a/k/a Admin (“Respondent”),
represented by Maria Bergsten,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <safecoinsuance.com>, <liberyinsurance.com>, and <montgomery-insurance.com>, registered with Fabulous.com PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2009.
On December 20, 2009, Fabulous.com PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <safecoinsuance.com>, <liberyinsurance.com>, and <montgomery-insurance.com> domain name are registered with Fabulous.com PTY LTD. and that the Respondent is the current registrant of the name. Fabulous.com PTY LTD. has verified that Respondent is bound by the Fabulous.com PTY 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 December 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 19, 2010 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 firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 19, 2010.
On February 1, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq., as Panelist.
In the sole discretion of the Panel and by means of an official order issued on February 8, 2010, served upon the parties on the very same date, the Panel required Respondent to submit to the Forum, the corresponding Power of Attorney and/or of Representation which allowed his counsel to incontestably surrender its client’s ownership upon the domains in dispute. The foregoing, as per the Panel deemed appropriate to have sufficient evidence attesting that Ms. Bergsten is duly empowered to proceed as done through the response to the Complaint.
After examining the evidence enclosed to the proceeding, the Panel did not find any reliable connection between the current owner of the disputed domain and KANTER ASSOCIATES SA. And thus, decided to proceed as previously explained.
Nevertheless, through a formal and conceited letter, Mr. Paul R. Keating, Esq, acting on behalf of Respondent, assured that his Law Firm (LAW.ES) does represents the legal interests of KANTER ASSOCIATES SA. in this proceeding.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant asserts and has submitted evidence of federal trademark registrations for the LIBERTY MUTUAL mark (Reg. No. 1,405,249 issued August 12, 1986), the SAFECO mark (Reg. No. 1,057,198 issued January 25, 1977) and the MONTGOMERY INSURANCE mark (Reg. No. 2,897,107 issued October 26, 2004) with the United States Patent and Trademark Office (“USPTO”).
2. Complainant argues that Respondent’s <safecoinsuance.com> <liberyinsurance.com> and <montgomery-insurance.com> domain names are confusingly similar to Complainant’s SAFECO, LIBERTY MUTUAL and MONTGOMERY INSURANCE marks pursuant to Policy ¶ 4(a)(i).
3. Respondent has no rights to or legitimate interests in the domain names in dispute. Furthermore, Complainant submits that because of the widespread renown, use, promotion, distribution and advertisement by Complainant of its marks, Respondent knew or should have known of Complainant’s rights in the marks, and the valuable goodwill represented and symbolized thereby when it registered the domain names in dispute.
4. Respondent registered and use the disputed domains in bad faith. The prior, as logical consequence of the previous contentions and thus, Complainant argues that Respondent’s Registration of the Domain Name should be considered as having been registered and being used in bad faith and according to the ICANN rule 3 (b) (ix) (3), the Complainant claims that the Respondent had an affirmative obligation of not to register domain names that could violate any registered service or trademark.
The Complainants requests that the Panel issues a decision that the domain-names be transferred.
Respondent has admitted in his response to the complaint that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.
Respondent consents to transfer the <safecoinsuance.com> <liberyinsurance.com> and <montgomery-insurance.com> domain names to Complainant. However, after the initiation of this proceeding, the registrar, Fabulous.com PTY LTD., placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. As a result, the Panel considers that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain name in question to Complainant, it is decided to forego the traditional UDRP analysis and order an immediate transfer of the <safecoinsuance.com> <liberyinsurance.com> and <montgomery-insurance.com> domain names.
Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
has decided to accept the Respondent’s request in making its decision, and
notes that Respondent has chosen not to challenge any of Complainant’s
assertions but, rather, to agree to transfer the disputed domain name to
Complainant in satisfaction of Complainant’s requested remedy. Therefore, under
such circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the
traditional UDRP analysis and order the transfer of the domain names. Several
Panels have reached the very same conclusion when ruling similar cases: (See
for example Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA
212653 (Nat Arb. Forum Jan. 13, 2004 and
In connection to the official request issued, and though Respondent failed to properly comply with the administrative order, the Panel hereby accepts Ms. Maria Bergsten and/or Mr. Paul R. Keating, Esq, as representatives for Respondent, leading the provisions of the Policy (rules 3 (b) (xiv) and 5 (b) (vii).
Regardless of the foregoing facts, even though the decision of the Panel will be necessarily to transfer the domain names in dispute in favor of Complainant for the aforementioned reasons, and although the Panel has decided that Respondent has explicitly consented on its answer with the terms of the complaint even without a decision on the merits, the Panel deems crucial to point out the following findings made on his behalf:
· In this case, the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them, which makes necessary for arbitrators to issue decisions not only ordering the transfer, but also convicting, reproving and condemning such behaviors.
· As required by Policy, the Panel finds that the 3 elements of the Policy are met, due to the following considerations:
The Domain Names <safecoinsuance.com> <liberyinsurance.com> and <montgomery-insurance.com> are confusingly similar to Complainant’s marks LIBERTY MUTUAL mark (Reg. No. 1,405,249 issued August 12, 1986), the SAFECO mark (Reg. No. 1,057,198 issued January 25, 1977) and the MONTGOMERY INSURANCE mark (Reg. No. 2,897,107 issued October 26, 2004) registered before the United States Patent and Trademark Office (“USPTO”). The disputed Domain Names incorporate Complainant’s marks in its entirety, adding misspelled version of the correct terms included in the legitimate domain names and adding the generic top-level domain (“gTLD”) “.com.”, such as <safecoinsuance.com>, <liberyinsurance.com>. The Panel finds that generic terms, especially generic terms with an obvious relationship to a complainant’s business operation that are added to a complainant’s registered mark, create a confusing similarity between the disputed domain name and the mark. By registering the disputed domain names, Respondent creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Domain Names and the web sites to which it resolve.
Respondent is using Complainant’s Marks in the Domain Name to drive traffic to Respondent’s Site, which gathers personal information from visitors and promotes the goods and services of various businesses unrelated to Complainant. Thus, Respondent registered the Domain Names with the intent to attract Internet users to its Site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Domain Name and Site, thereby misleadingly diverting Internet traffic from Complainant’s web site to Respondent’s for commercial gain. This use of the Domain Names indicates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <safecoinsuance.com>, <liberyinsurance.com>, and <montgomery-insurance.com> domain names be TRANSFERRED from Respondent to Complainant.
FERNANDO TRIANA, Esq., Panelist
Dated: February 22, 2010
 See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004)
 See also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005)
 In Graebel Van Lines, Inc.