Liberty Mutual Insurance Company v. Ho Nim
Claim Number: FA1010001349889
Complainant is Liberty Mutual Insurance Company ("Complainant"), represented by Mary Ellen Morse of Liberty Mutual Insurance Company, Massachusetts, USA. Respondent is Ho Nim ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <libertymutualbusiness.com>, <webmail-libertymutual.com>, <safeconwo.com>, and <coachofyear.com>, registered with Above.com Pty Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2010; the National Arbitration Forum received payment on October 1, 2010.
On October 6, 2010, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <libertymutualbusiness.com>, <webmail-libertymutual.com>, <safeconwo.com>, and <coachofyear.com> domain names are registered with Above.com Pty Ltd and that Respondent is the current registrant of the names. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@libertymutualbusiness.com, postmaster@webmail-libertymutual.com, postmaster@safeconwo.com, postmaster@coachofyear.com. Also on October 8, 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 November 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <libertymutualbusiness.com> and <webmail-libertymutual.com> domain names are confusingly similar to Complainant’s LIBERTY MUTUAL mark.
Respondent’s <safeconwo.com> domain name is confusingly similar to Complainant’s SAFECO mark.
Respondent’s <coachofyear.com> domain name is identical to Complainant’s COACH OF THE YEAR mark.
2. Respondent does not have any rights or legitimate interests in the <libertymutualbusiness.com>, <webmail-libertymutual.com>, <safeconwo.com>, and <coachofyear.com> domain names.
3. Respondent registered and used the <libertymutualbusiness.com>, <webmail-libertymutual.com>, <safeconwo.com>, and <coachofyear.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, uses the LIBERTY MUTUAL mark in connection with products and services in the insurance and financial services industry. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIBERTY MUTUAL mark (e.g., Reg. No. 1,405,249 issued August 12, 1983). Complainant also uses the SAFECO mark in connection with financial services and insurance. Complainant holds trademark registrations with the USPTO for the SAFECO mark (e.g., Reg. No. 1,057,198 issued January 25, 1977). Finally, Complainant has used the COACH OF THE YEAR mark since 2004 to promote and award responsible coaching in each NCAA Division. Complainant has run extensive print and electronic advertising campaigns to promote its COACH OF THE YEAR mark. Additionally, more than 1.2 million people in 2009 cast votes on Complainant’s official <coachoftheyear.com> website. Complainant has also donated over $1 million dollars to colleges, universities, and charities through this program.
Respondent, Ho Nim, registered the <libertymutualbusiness.com> domain name on November 27, 2009; the <webmail-libertymutual.com> domain name on October 20, 2009; the <safeconwo.com> domain name on November 12, 2009; and the <coachofyear.com> domain name on November 19, 2009. The disputed domain names resolve to pay-per-click websites that provide hyperlinks to third-party websites that are unrelated to Complainant as well as third-party websites that provide services that compete with Complainant’s business.
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’s trademark registrations sufficiently prove its rights in the LIBERTY MUTUAL and SAFECO marks 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). It is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant does not yet hold a trademark registration with the USPTO for the COACH OF THE YEAR mark. However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant avers it has acquired common law rights in the COACH OF THE YEAR mark through sufficient secondary meaning associated with the mark. Complainant states that it began its COACH OF THE YEAR campaign in 2004 in order to promote and award responsible coaching in each NCAA Division. Complainant claims that it has run extensive print and electronic advertising campaigns to promote the COACH OF THE YEAR mark since then. Complainant submits a press release from 2009 that describes Complainant in connection with the COACH OF THE YEAR mark. Additionally, Complainant argues that more than 1.2 million people cast votes on Complainant’s <coachoftheyear.com> website in 2009. Finally, Complainant has donated over $1 million dollars to colleges, universities, and charities through this program. The Panel finds that Complainant has provided sufficient evidence to demonstrate that its COACH OF THE YEAR mark has acquired secondary meaning. Therefore, the Panel finds that Complainant has established common law rights in the COACH OF THE YEAR mark pursuant to Policy ¶ 4(a)(i) that date back to 2004. See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Respondent’s <libertymutualbusiness.com> and <webmail-libertymutual.com> domain names are confusingly similar to its LIBERTY MUTUAL mark. Respondent fully incorporates Complainant’s mark in the disputed domain names and then merely omits the space between the words in the mark, and attaches the generic term “business” to Complainant’s mark in the <libertymutualbusiness.com> domain name. In addition, Respondent attaches the generic term “webmail” and adds a hyphen to Complainant’s mark in the <webmail-libertymutual.com> domain name. Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in both of the disputed domain names. The Panel finds that these alterations do not negate a finding of confusingly similarity. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel determines that Respondent’s <libertymutualbusiness.com> and <webmail-libertymutual.com> domain names are confusingly similar to Complainant’s LIBERTY MUTUAL mark under Policy ¶ 4(a)(i).
Respondent’s <safeconwo.com> domain name is confusingly similar to its SAFECO mark. Respondent replicates Complainant’s mark in the disputed domain name and then merely adds the letters “nwo” and the gTLD “.com.” The Panel finds the addition of a string of indiscriminate letters and a gTLD do not sufficiently distinguish a domain name from a mark. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Reese v. Morgan, supra. Therefore, the Panel finds Respondent’s <safeconwo.com> domain name is confusingly similar to Complainant’s SAFECO mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <coachofyear.com> domain name is identical to its COACH OF THE YEAR mark. Again, Respondent fully incorporates Complainant’s mark in the disputed domain name and then merely omits the spaces between the words in the mark, and affixes the gTLD “.com” to Complainant’s mark. The Panel finds that spaces and gTLDs are irrelevant to the Policy ¶ 4(a)(i) analysis. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, supra; see also Reese v. Morgan, supra. Therefore, the Panel finds that Respondent’s <coachofyear.com> domain name is identical to Complainant’s COACH OF THE YEAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. 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.”); see also 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.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant states that it has not licensed or otherwise authorized Respondent to use its LIBERTY MUTUAL, SAFECO, or COACH OF THE YEAR marks in any way. Additionally, the WHOIS information lists “Ho Nim” as the registrant of the domain names, which the Panel finds is not similar to the <libertymutualbusiness.com> domain name, the <webmail-libertymutual.com> domain name, the <safeconwo.com> domain name, or the <coachofyear.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).
Complainant contends the disputed domain names resolve to directory websites. Complainant submits screen shots of the resolving websites. These images show websites that contain hyperlinks with titles like “Insurance Companies,” “Auto Insurance Liberty,” “Business Email,” “Email Services,” “Fast Cash Loan,” “Credit Card Debt Consolidation,” “South Beach Hotels,” and “Car Insurance.” Therefore, the Panel finds that Respondent’s disputed domain names resolve to websites that provide hyperlinks to third-party websites that are unrelated to Complainant as well as third-party websites that offer services that compete with Complainant’s financial and insurance services. The Panel also presumes that Respondent profits from its use of the disputed domain names through the receipt of pay-per-click fees. Accordingly, the Panel determines that Respondent does not use the <libertymutualbusiness.com>, <webmail-libertymutual.com>, <safeconwo.com>, and <coachofyear.com> domain names for 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the disputed domain names redirect Internet users to websites that provide hyperlinks to Complainant’s competitors. Accordingly, the Panel finds that the disputed domain names disrupt Complainant’s business, which is evidence of registration and use in bad faith under 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent’s <libertymutualbusiness.com>, <webmail-libertymutual.com>, <safeconwo.com>, and <coachofyear.com> domain names are confusingly similar or identical to Complainant’s LIBERTY MUTUAL, SAFECO, and COACH OF THE YEAR marks. Respondent likely profits from its use of the disputed domain names through the receipt of pay-per-click fees. Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Accordingly, the Panel finds that this is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <libertymutualbusiness.com>, <webmail-libertymutual.com>, <safeconwo.com>, and <coachofyear.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 16, 2010
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