Health Care Service Corporation v. Ram K. and R. Murti Bhanot
Claim Number: FA1001001303685
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.
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.
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 firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org 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.
Complainant requests that the domain names be transferred from Respondent to 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
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.
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.
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.
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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[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)).