Liberty Mutual Insurance Company v. Richard Jones
Claim Number: FA1006001330673
Complainant is Liberty
Mutual Insurance Company (“Complainant”), represented by Mary Ellen
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <libertymutuel.com>, registered with eNom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 18, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <libertymutuel.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@libertymutuel.com by e-mail. Also on June 30, 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 21, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 "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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <libertymutuel.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark.
2. Respondent does not have any rights or legitimate interests in the <libertymutuel.com> domain name.
3. Respondent registered and used the <libertymutuel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, has been
providing insurance and financial services in the
Respondent, Richard Jones, registered the <libertymutuel.com> domain name on October 28, 2003. Respondent’s disputed domain name resolves to a website that features a search engine and sponsored third-party links to both competing and unrelated websites and businesses.
Complainant submits evidence to show that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the domain names at issue to the respective complainants. See First Mariner Bank v. Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); see also Kohler Co. v. Jones, FA 708647 (Nat. Arb. Forum June 22, 2006); see also Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006); see also Procter & Gamble Co. v. Jones, FA 1266787 (Nat. Arb. Forum July 22, 2009).
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.
The Panel finds that Complainant has submitted sufficient evidence to show that it has rights in the LIBERTY MUTUAL mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,405,249 issued Aug. 12, 1986) and OHIM (Reg. No. 1,743,855 issued Feb. 19, 2003). The Panel further finds that Complainant’s mark does not need to be registered within the country of Respondent’s residence for Complainant to establish rights in its mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); 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 contends that Respondent’s <libertymutuel.com>
domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark because
the domain name contains a misspelled version of Complainant’s mark by
replacing the letter “a” with the letter “e.”
Further, Complainant contends that adding the generic top-level domain
(“gTLD”) “.com” is irrelevant to Policy ¶ 4(a)(i)
analysis. The Panel finds that the <libertymutuel.com>
domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark under
Policy ¶ 4(a)(i) where it contains a misspelled version of Complainant’s mark,
without the space between the terms of the mark, and adds the gTLD “.com.” 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 [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec.
1, 2000) (holding that the deliberate introduction of errors or changes, such
as the addition of a fourth “w” or the omission of periods or other such
“generic” typos do not change respondent’s infringement on a core trademark
held by the complainant); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Jerry
Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <libertymutuel.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant 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.”). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests in the disputed domain name. See 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). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists the registrant of the <libertymutuel.com>
domain name as “Richard Jones” and Respondent has failed to offer evidence to
show that it is commonly known by the <libertymutuel.com> domain
name.
There is no other evidence on the record showing Respondent is commonly
known by the disputed domain name.
Complainant further asserts that Respondent is not authorized to use the
LIBERTY MUTUAL mark in any way.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See
St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name); see
also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is using the <libertymutuel.com> domain name to operate a search engine that features a list of sponsored search results containing third-party links to both competing insurance and financial services websites as well as websites unrelated to Complainant. The Panel finds that Respondent’s use of the disputed domain name to display various third-party links to competing and unrelated websites and businesses, presumably for financial gain, is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant argues that Respondent’s <libertymutuel.com>
domain name is a typosquatted version of Complainant’s LIBERTY MUTUAL mark and
official <libertymutual.com> domain name.
Complainant alleges that Respondent is diverting Internet users to
Respondent’s website by using a common misspelling of Complainant’s LIBERTY
MUTUAL mark that occurs when an Internet user accidentally types the letter “e”
rather than the intended letter “a.” The
Panel finds that Respondent’s registration and use of the misspelled version of
Complainant’s mark constitutes typosquatting and is evidence of Respondent’s
lack of rights and legitimate interests in the <libertymutuel.com>
domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is a pattern
cybersquatter with a history of registering domain names that infringe upon the
trademark rights of others. Further,
Complainant argues that Respondent has been the respondent in several previous
UDRP proceedings and has been ordered by the respective panels to transfer the
disputed domain names to the complainants.
See First
Mariner Bank v. Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); see also Kohler Co. v. Jones, FA 708647
(Nat. Arb. Forum June 22, 2006); see also
Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006); see also Procter & Gamble Co. v. Jones,
FA 1266787 (Nat. Arb. Forum July 22, 2009).
Complainant asserts that Respondent’s pattern of bad faith registration
and use of domain names is evidence of bad faith registration and use in the
instant case pursuant to Policy ¶ 4(b)(ii). The Panel agrees and finds that Respondent’s
registration and use of the <libertymutuel.com> domain name was
made in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Complainant argues that Respondent is using the confusingly
similar <libertymutuel.com> domain name to redirect Internet users
seeking Complainant’s official <libertymutual.com> website to Respondent’s
website that advertises and provides third-party links to Complainant’s
competitors in the insurance and financial services industry. Therefore, the Panel finds that Respondent’s
use of the disputed domain name to divert Internet users from Complainant’s
website and services to the services of Complainant’s competitors is evidence
of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii) because Respondent is diverting business away from
Complainant and to Complainant’s competitors through the use of a confusingly
similar domain name. See David
Hall Rare Coins v.
Respondent’s <libertymutuel.com> domain name resolves to a website that contains a search engine and sponsored links to third-party businesses and websites in competition with Complainant. Complainant contends that Respondent receives click-through fees associated with the third-party links displayed on Respondent’s website when an Internet user clicks on them. The Panel finds that Respondent is using the confusingly similar <libertymutuel.com> domain name, a misspelled version of Complainant’s LIBERTY MUTUAL mark and official <libertymutual.com> website, to intentionally attract Internet users to Respondent’s website for commercial gain, and that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel previously determined that Respondent engaged in
typosquatting by registering and using the <libertymutuel.com>
domain name containing a commonly misspelled version of Complainant’s
mark. Complainant contends that
typosquatting is further evidence that Respondent registered and used the
disputed domain name in bad faith. The
Panel agrees and finds that Respondent’s use of a common misspelling of
Complainant’s LIBERTY MUTUAL mark in the disputed domain name is further
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See
Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see also 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).
The Panel finds that 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 <libertymutuel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Re.t)
Dated: July 23, 2010
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