national arbitration forum

 

DECISION

 

Esurance Insurance Services, Inc. (formerly known as Esurance Inc.) v. Bin G Glu

Claim Number: FA1006001327841

 

PARTIES

Complainant is Esurance Insurance Services, Inc. (formerly known as Esurance Inc.) (“Complainant”), represented by Alias Encore, Inc., California, USA.  Respondent is Bin G Glu (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <esuarnce.com>, registered with GoDaddy.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2010.

 

On June 3, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <esuarnce.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 June 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@esuarnce.com.  Also on June 7, 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 July 6, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <esuarnce.com> domain name is confusingly similar to Complainant’s ESURANCE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <esuarnce.com> domain name.

 

3.      Respondent registered and used the <esuarnce.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Esurance Insurance Services, Inc., is a publicly traded company on the New York Stock Exchange that provides personal automobile insurance directly to consumers online and through select online agents.  Complainant owns three trademark registrations for the ESURANCE mark with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 2,673,515     issued January 14, 2003;

Reg. No. 2,708,357     issued April 22, 2003; and

Reg. No. 2,854,154     issued June 15, 2004.

 

Respondent, Bin G Glu, registered the <esuarnce.com> domain name on July 26, 2004.  The disputed domain name resolves to a website that is not being actively used to display any content.

 

Respondent has previously been the respondent in at least eight other UDRP proceedings in which the disputed domain names were transferred to the respective complainants.  See, e.g., Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007); Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007); Hewlett-Packard Co. v. Bin g Glu, FA 714965 (Nat. Arb. Forum June 30, 2006).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns three trademark registrations for the ESURANCE mark with the USPTO:

 

Reg. No. 2,673,515     issued January 14, 2003;

Reg. No. 2,708,357     issued April 22, 2003; and

Reg. No. 2,854,154     issued June 15, 2004.

 

The Panel finds that a trademark registered with the USPTO conclusively establishes Complainant’s rights in the ESURANCE mark for the purposes of Policy ¶ 4(a)(i), even when the Respondent operates in a different country.  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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant alleges that Respondent’s <esuarnce.com> domain name is confusingly similar to Complainant’s ESURANCE mark because the disputed domain name merely transposes the letters “a” and “r” and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that misspelling Complainant’s mark by transposing letters fails to create a distinct domain name or avoid confusing similarity.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark).  The Panel also finds that the gTLD “.com” serves no distinguishing function according to Policy ¶ 4(a)(i).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  The Panel therefore finds that Respondent’s <esuarnce.com> domain name is confusingly similar to Complainant’s ESURANCE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

As Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent to support this assertion.  Complainant has adequately put forth such a case, thereby transferring the burden to demonstrate rights or legitimate interests to Respondent.  The Panel concludes that Respondent’s failure to respond indicates a lack of rights and legitimate interests and allows the Panel to accept Complainant’s assertions as true according to Policy ¶ 4(a)(ii).  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  The Panel elects to consider all the evidence in the record in light of the Policy ¶ 4(c) factors, however, in order to determine whether Respondent possesses any rights or legitimate interests in the disputed domain name.

 

Complainant contends that Respondent is not commonly known by the <esuarnce.com> domain name.  In addition to the WHOIS information listing the registrant for the disputed domain name as “Bin G Glu,” a name not associated with the disputed domain name, Respondent is not authorized to use Complainant’s mark or sponsored or affiliated with Complainant in any way.  The Panel finds that the combination of the WHOIS information, along with the absence of other affirmative evidence indicating a connection between Respondent and the disputed domain name, reveals that Respondent is not commonly known by the disputed domain name and consequently has no rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant alleges that Respondent’s <esuarnce.com> domain name resolves to a dead website that is not being actively used to display content or offer goods or services.  The Panel finds that Respondent’s failure to actively use the disputed domain name supports a finding that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant argues that Respondent’s <esuarnce.com> domain name is an example of typosquatting since the domain name results from the transposition of two letters in Complainant’s mark.  Complainant asserts that this typosquatting is one way for Respondent to take advantage of the fame of Complainant’s mark.  The Panel finds that Respondent’s typosquatting is evidence supporting a finding of Respondent’s lack of rights and legitimate interests according to Policy ¶ 4(a)(ii).  See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent has previously been the respondent in at least eight other UDRP proceedings in which the disputed domain names were transferred to the respective complainants.  See, e.g., Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007); Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007); Hewlett-Packard Co. v. Bin g Glu, FA 714965 (Nat. Arb. Forum June 30, 2006).  The Panel finds that this history of adverse UDRP proceedings indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).  See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

Complainant argues that Respondent is not making active use of the <esuarnce.com> domain name as the disputed domain name resolves to a website with no content and showing a message that indicates the domain name is not in use.  The Panel finds that Respondent’s failure to actively use the disputed domain name that is appropriating Complainant’s mark indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel has previously concluded that Respondent is engaged in the practice of typosquatting by registered the <esuarnce.com> domain name that consists of a typographical error of Complainant’s ESURANCE mark.  The Panel finds typosquatting to be evidence in itself of bad faith registration and use under Policy ¶ 4(a)(iii).  See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <esuarnce.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr, Panelist

Dated:  July 9, 2010

 

 

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