Health Care Service Corporation v. Mark IV Brokerage
Claim Number: FA1003001313057
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 is <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2010.
On March 12, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@fortdearbornbrokerage.com and postmaster@fortdearbornbrokeragegroup.com. Also on March 19, 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 April 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" 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:
1. Respondent’s <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com> domain names are confusingly similar to Complainant’s FORT DEARBORN LIFE mark.
2. Respondent does not have any rights or legitimate interests in the <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com> domain names.
3. Respondent registered and used the <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Health Care Service Corporation, has registered its FORT DEARBORN LIFE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,388,641 issued February 26, 2008). Complainant uses the mark in connection with providing employee benefits, group life insurance, short- and long-term disability insurance, dental insurance and individual annuity programs.
Respondent, Mark IV Brokerage, registered both disputed domain names on March 4, 2008. The disputed domain names each resolve to a website with links to third-party competitors of Complainant.
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 it has rights in its FORT DEARBORN LIFE mark due to its registration with the USPTO (Reg. No. 3,388,641 issued February 26, 2008). The Panel finds Complainant has established rights in the FORT DEARBORN LIFE mark for purposes of Policy ¶ 4(a)(i) through its registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant argues that Respondent’s <fortdearbornbrokerage.com> and
<fortdearbornbrokeragegroup.com> domain names are confusingly
similar to Complainant’s FORT DEARBORN LIFE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names incorporate the dominant
features of Complainant’s mark (“
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case in support of this allegation, the burden to establish that Respondent has rights or legitimate interests in the disputed domain names shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case, shifting the burden to the Respondent under Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will proceed to determine whether this is the case under Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy 4(a)(ii).”)
Respondent has not offered evidence, nor is there evidence in the record, that Respondent is commonly known by the disputed domain names. Complainant asserts Respondent is not licensed or otherwise authorized to use the FORT DEARBORN LIFE mark. The WHOIS information for the <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com> domain names identify “Mark IV Brokerage” as the registrant. Without affirmative evidence, the Panel finds that Respondent appears to be but is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Respondent’s disputed domain names resolve to websites that feature generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain names are not bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com> domain names each redirect Internet users to a web directory with links to third-party competitors of Complainant. Such activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s services will be diverted to sites featuring competing services. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent uses the disputed
domain names to offer links to third-party competitors of Complainant.
Internet users, searching for Complainant’s services, may become confused as to
Complainant’s sponsorship or affiliation with the disputed domain names and
resolving websites. When the Internet users are diverted to Respondent’s
websites and then click on any of the third-party links, it is presumed that Respondent
is compensated on a pay-per-click basis. Therefore, the Panel finds
Respondent’s efforts to mislead Internet users and attract Complainant’s
business in order to receive commercial gain constitute bad faith registration
and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June
2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where
the respondent was diverting Internet users searching for the complainant to
its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed
domain name to operate a website which features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. Such use for
Respondent’s own commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fortdearbornbrokerage.com> and <fortdearbornbrokeragegroup.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 27, 2010
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