Health Care Service Corporation v. Admin c/o Maltuzi LLC
Claim Number: FA1001001304291
Complainant is Health Care Service Corporation (“Complainant”), represented by Sean
Garrison, of Lewis and Roca LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ftdearbornlife.com> and <fortdearborne.com>, registered with Nameking.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2010. With its Complaint, Complainant also chose to proceed 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 submitting an “opt-in” form available on the Forum’s website.
On January 22, 2010, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ftdearbornlife.com> and <fortdearborne.com> domain names are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 January 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@ftdearbornlife.com and postmaster@fortdearborne.com. Also on January 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant is the parent company of Fort Dearborn Life Insurance Company.
Fort Dearborn Life Insurance Company is a leading provider of employee benefits, insurance services and individual annuity programs.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FORT DEARBORN LIFE INSURANCE COMPANY and related marks (including Reg. No. 3,193,293, issued January 2, 2007).
Respondent, Maltuzi LLC,
registered the <ftdearbornlife.com>
domain name on January 29, 2007 and the <fortdearborne.com> domain name on February 12, 2007.
Respondent’s domain names
resolve to websites carrying advertisements and links to third-party websites
offering insurance and related services in competition with the business of
Complainant.
Respondent is a serial
cybersquatter who has been the respondent in at least six other UDRP
proceedings in which disputed domain names were transferred to
complainants.
Respondent’s <ftdearbornlife.com> and < fortdearborne.com> domain names are confusingly similar to Complainant’s FORT DEARBORN LIFE INSURANCE COMPANY mark.
Respondent is not commonly known by the disputed domain names.
Respondent does not have any rights to or legitimate interests in the domain names <ftdearbornlife.com> and <fortdearborne.com>.
Respondent registered and uses the <ftdearbornlife.com> and <fortdearborne.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the FORT DEARBORN LIFE
INSURANCE COMPANY trademark with the USPTO sufficiently establishes its rights
in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant established rights to the MILLER TIME mark through its national trademark registrations).
Complainant asserts that Respondent’s domain names are confusingly similar to its FORT DEARBORN LIFE INSURANCE COMPANY mark under Policy ¶ 4(a)(i). Respondent’s domain names both contain shortened forms of Complainant’s mark. The disputed domain name <fortdearborne.com> differs from Complainant’s mark in that an “e” is added to the spelling of the “dearborn”; the generic words “life,” “insurance,” and “company” in Complainant’s mark are not present in the disputed domain name; the spaces between the words are deleted; and the generic top-level domain (“gTLD”) “.com” has been added. The disputed domain name <ftdearbornlife.com> varies from Complainant’s mark by abbreviating “fort” as “ft,” eliminating the generic terms “insurance” and “company”, deleting the spaces between the words, and adding the gTLD “.com.”
The addition of one letter to Complainant’s mark that does not result in a domain name that is phonetically distinct from Complainant’s mark is insufficient to prevent confusing similarity between the <fortdearborne.com> domain and Complainant’s mark. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004):
Words
that are spelled differently but are phonetically similar do not negate the
confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
Similarly, the
abbreviation of the term “fort” in the <ftdearbornlife.com>
domain name fails to distinguish the disputed domain name from Complainant’s
mark. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name
<ms-office-2000.com> to be confusingly similar to the MICROSOFT mark even
though the mark is abbreviated in the domain name); see also Minn.
Likewise, eliminating some elements of the Complainant’s
mark in forming the disputed domain names is insufficient to differentiate the
domain names from Complainant’s mark, especially where the key identifying elements
of the mark remain. See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb.
Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to
Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the
descriptive term ‘personal.’”); see also WestJet
Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001)
(finding that the <westjets.com> domain name is confusingly similar to a
complainant’s mark, where that complainant holds the
Moreover, the deletion of spaces between words and the addition of the gTLD “.com” are merely formatting requirements of domain names and thus have no bearing on a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are
impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name … is confusingly similar to the
complainant’s mark.
Therefore, the Panel finds that Respondent’s domain names <fortdearborne.com> and <ftdearbornlife.com> are confusingly similar to Complainant’s FORT DEARBORN LIFE INSURANCE COMPANY mark, and that Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case under this heading, the burden shifts to Respondent to demonstrate that it does have rights to or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
[c]omplainant
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.
To the same effect, see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008).
Complainant has put forth a sufficient prima facie case in these proceedings. Because Respondent has failed to respond to the allegations of the Complaint, we are free to presume that it has no rights or interests in the disputed domain names which are cognizable under the Policy. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given
Respondent’s failure to submit a substantive answer in a timely fashion, the
Panel accepts as true all of the allegations of the complaint.
See also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response to a complaint filed under the Policy, a respondent failed to invoke any circumstance which could demonstrate its rights to or legitimate interests in a domain name). Nonetheless, we elect to examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names sufficient to satisfy the requirements of the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain names. In addition, the WHOIS information for the disputed domain names identifies the registrant only as “Maltuzi LLC.” We conclude, therefore, that Respondent is not commonly known by the disputed domain names and accordingly lacks rights and legitimate interests in 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 a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
We also observe that there is no dispute as to Complainant’s allegation to the effect that Respondent’s domain names divert Internet users to portal websites which advertise services related to and in competition with the business of Complainant through links sponsored by third-parties. The operation of such websites presumably benefits Respondent financially through the receipt of “click-through” fees. This use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that a respondent’s use of disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s
demonstrated intent to divert Internet users seeking Complainant’s website to a
website of Respondent and for Respondent’s benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s past behavior in connection with the
registration and use of domain names, as exhibited in prior UDRP proceedings adverse
to Respondent, evidence a pattern of cybersquatting. See, e.g., Talecris Biotherapeutics Inc. v. Maltuzi, FA 949710 (Nat. Arb.
Forum May 18, 2007); Parke-Bell Ltd.,
Inc. v. Maltuzi LLC, FA 1082265 (Nat. Arb. Forum Nov. 7, 2007); Fed. Signal Corp. v. Maltuzi, LLC, FA
1158611 (Nat. Arb. Forum Apr. 30, 2008).
This history of illegitimate registration and use of domain names
containing third-party marks evidences bad faith registration and use of the
instant domain names under Policy ¶ 4(b)(ii).
See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a
pattern of registering and using domain names, in bad faith within the meaning
of Policy ¶ 4(b)(ii), where a respondent previously registered domain names
incorporating third party trademarks); see also Société Air France v.
Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and
use of a domain name under Policy ¶ 4(b)(ii) where a
complainant showed evidence of a pattern of registration and use of “numerous
other domain names” by a respondent).
Respondent’s disputed domain names
redirect Internet users to websites featuring ads and links to third-party
providers of services that compete with the business of Complainant. This use of the domain names disrupts
Complainant’s business. Such disruption
demonstrates bad faith registration and use of the domain names under Policy ¶
4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
To the same effect, see also
Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004).
Further, Respondent’s use of the key identifying elements of Complainant’s mark in forming the disputed domain names is intended to attract Internet users seeking Complainant’s online presence. This allows Respondent to benefit financially from the receipt of “click-through” fees for each Internet user diverted to Respondent’s websites. Respondent’s effort thus to mislead Internet users for its commercial gain constitutes bad faith registration and use of the contested domain names pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website offering competing travel services fell within the compass of Policy ¶ 4(b)(iv)); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003).
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ftdearbornlife.com> and <fortdearborne.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 11, 2010
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