Health Care Service Corporation v. Ram K. and
R. Murti Bhanot
Claim Number: FA1001001303685
PARTIES
Complainant is Health Care Service Corporation (“Complainant”), represented by Sean Garrison, of Lewis and Roca, LLP, Arizona, USA. Respondent is Ram K. and R. Murti Bhanot (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <fortdearbornlifeinsurance.com>,
<fortdearborninsurance.com>,
and <dearbornlifeinsurance.com>,
registered with Fabulous.com Pty Ltd.
PANEL
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 19, 2010. With
its Complaint, Complainant also chose to proceed entirely electronically under
the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and
the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the
Forum’s website.
On January 19, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the
National Arbitration Forum that the <fortdearbornlifeinsurance.com>,
<fortdearborninsurance.com>,
and <dearbornlifeinsurance.com>
domain names 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 February 18, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of March 10,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to
postmaster@fortdearbornlifeinsurance.com, postmaster@fortdearborninsurance.com,
and postmaster@dearbornlifeinsurance.com by e-mail. Also on February 18, 2010, the Written Notice
of the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on
February 18, 2010. Respondent did not
indicate assent to participate in an electronic process; therefore Respondent’s
submission was required to be sent in hard copy per the version of UDRP Rule 5
currently in effect.
Complainant’s Additional Submission was received on February 23, 2010
in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on February 25, 2010 in
compliance with Supplemental Rule 7.
On March 4, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett G. Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trade mark rights and alleges that the disputed
domain names are identical or confusingly similar to its trade mark.
Complainant alleges that Respondent has no rights or legitimate
interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed
domain names in bad faith.
The detail of the Complaint, so far as relevant, is found in the Discussion
which follows
B. Respondent
Respondent’s principal submission is that the disputed domain names are
composed entirely of descriptive terms and terms with a geographical
significance and so they remain free for use and were accordingly registered by
Respondent in good faith.
C. Additional Submissions
Both parties made Additional Submissions which have been considered by
the Panel and which are referred to as necessary in the Discussion which
follows.
FINDINGS
Complainant provides insurance services and
is the owner, amongst others, of United States Trade Mark Reg. No. 3,193,293
for FORT DEARBORN INSURANCE COMPANY.
Complainant has used that trade mark
continuously since 1966 and has acquired a reputation in the trade mark though
use.
Respondent is a domainer. It registered the disputed domain names on
December 15, 2004.
The disputed domain names are associated with
websites which carry links to third party competitors of Complainant.
There is no relationship between the parties
and Complainant has not authorized Respondent to use its trade mark or to
register any domain name incorporating the trade mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 has rights on the trade mark
acquired through both use[i]
and registration. For the purposes of
Policy ¶ 4(a)(i) it is immaterial to that finding that
registration of the disputed domain names predated the registration of the
trade mark.
Each of the
disputed domain names is confusingly similar to Complainant’s trade mark. Each domain names takes the distinctive part
of the trade mark and is confusingly similar in overall appearance to the trade
mark.
Whilst Respondent contends that domain names
are comprised of common, generic, and geographic terms over which Complainant
has no exclusive rights, the Panel observes that Policy ¶ 4(a)(i)
is only concerned as to whether Complainant has rights in the trade mark and
whether the disputed domain names are identical or confusingly similar to
Complainant’s trade mark.[ii]
The Panel has no hesitation in finding that
Complainant has established the first limb of the Policy.
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), after which the burden
shifts to Respondent to show it does have rights or legitimate interests.[iii]
Complainant argues that Respondent has failed
to offer evidence showing that it is commonly known by the domain names. Complainant has not authorized Respondent to
use the trade mark. Complainant provided
evidence that it is likely Respondent is using the domain names to drive
pay-per-click revenue through links to third party businesses, some of which
are Complainant’s competitors. The
burden shifts to Respondent.
The Panel finds Respondent’s use of the
disputed domain names is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).[iv]
The central plank
to all of Respondent’s submissions is that Fort Dearborn is a geographical
indicator and, as such, can not be monopolized by any one business. The Panel makes the simple observation that
the Complainant’s many Federally registered trade
marks are of themselves proof that is not the case. Moreover, Panel is in accord with
Complainant’s submission that when the term Fort Dearborn is used in relation
to insurance services, the term loses any geographic significance.
In any event, the
content on the websites to which the domain names resolve relates to
competitors of Complainant in the insurance industry. There is nothing to suggest that the websites
contain any information about the area were Fort Dearborn formerly existed and
everything to suggest that Respondent simply targeted Complainant’s trade mark
and business.
The Panel finds
Respondent lacks rights or legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Policy ¶ 4(b) sets out the circumstances
which shall be evidence of the registration and use of a domain name in bad
faith. They are:
(i) circumstances indicating that you have
registered or you have acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your
documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in
order to prevent the owner of the trademark or service mark from reflecting the
mark in a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name primarily for the
purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted
to attract, for commercial gain, Internet users to your website or other on‑line
location, by creating a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of your website or
location or of a product or service on your website or location.
What is noteworthy about Policy ¶ 4(b)(i)-(iv) is that they are all cases of both registration and use in bad faith. It is logical to first consider their
possible application to the facts.
Respondent uses
the domain names to resolve to websites featuring commercial
search engines and hyperlinks to third-parties, some of which are Complainant’s
competitors in the insurance business.
Complainant alleges that Respondent is thereby diverting potential
custom away from Complainant.
Former panels have
readily found bad faith registration and use under Policy ¶ 4(b)(iii) in these circumstances[v]
however in doing so it often seems that they have disregarded the requirement
that the parties must be competitors.
There is no sensible way in which the parties here could be regarded as
competitors.
Nonetheless,
Respondent’s actions fall squarely within Policy ¶ 4(b)(iv). Complainant argues Respondent receives
click-through fees from the aforementioned hyperlinks. The Panel finds that conclusion is more
likely than not. The Panel has already
found that confusion is likely.
Moreover, the evidence shows that it is more likely than not that
Respondent targeted Complainant.
The Panel finds
bad faith use and registration and so finds that Complainant has satisfied that
third and final element of the Policy.
Reverse Domain Name Hijacking
Respondent alleges
that Complainant has acted in bad faith and is engaging in reverse domain name
hijacking by initiating this dispute. The
Panel finds that allegation lacking in all merit and sees no need to further
address the point.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fortdearbornlifeinsurance.com>, <fortdearborninsurance.com>, and <dearbornlifeinsurance.com>
domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 17, 2010
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National Arbitration Forum
[i] Complainant
provides insurance coverage to over three million people and has over sixty
thousand group life contracts and provided evidence by A.M. Best Company and
Standard and Poor of its fiscal status.
[ii] See Vance Int’l, Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the
complainant had received a trademark registration for its VANCE mark, the
respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i));
see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs.,
FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
[iii] See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA 741828
(Nat. Arb. Forum Aug. 18, 2006).
[iv] See Vance Int’l,
Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of
a pay-per-click website at a confusingly similar domain name does not represent
a bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi,
FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s
contention of rights and legitimate interests in the <bravoclub.com>
domain name because the respondent was merely using the domain name to operate
a website containing links to various competing commercial websites, which the
panel did not find to be a use in connection with 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)).