national arbitration forum

 

DECISION

 

Assurant, Inc. v. Nicholas Suchyta

Claim Number: FA1355537

 

PARTIES

Complainant is Assurant, Inc. (“Complainant”), represented by Theresa Conduah of Alston & Bird LLP, North Carolina, USA.  Respondent is Nicholas Suchyta (“Respondent”), Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <assurantdata.us>, registered with 1&1 INTERNET AG.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 29, 2010; the Forum received a hard copy of the Complaint on November 1, 2010.

 

On November 2, 2010, 1&1 INTERNET AG confirmed by e-mail to the Forum that the <assurantdata.us> domain name is registered with 1&1 INTERNET AG and that Respondent is the current registrant of the name.  1&1 INTERNET AG has verified that Respondent is bound by the 1&1 INTERNET AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 4, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <assurantdata.us> domain name is confusingly similar to Complainant’s ASSURANT mark.

 

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

 

3.      Respondent registered and used the <assurantdata.us> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Assurant, Inc., operates an international insurance business.  Complainant operates its business under the ASSURANT trademark which is registered with the United States Patent and Trademark Organization (“USPTO”) (e.g., Reg. No. 2,543,367 issued February 26, 2002).

 

Respondent, Nicholas Suchyta, registered the <assurantdata.us> domain name on February 7, 2009.  The disputed domain name resolves to an inactive website.   

 

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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDROP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant alleges it has established rights in the ASSURANT mark thus establishing the requirement set forth under Policy ¶ 4(a)(i).  Previous panels have concluded that registration with a federal trademark authority is sufficient action to establish rights in a mark.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under UDRP ¶ 4(a)(i)).  Complainant contends and the Panel agrees that Policy ¶ 4(a)(i) is satisfied based on the registration of Complainant’s ASSURANT mark with the USPTO (e.g., Reg. No. 2,543,367 issued February 26, 2002). 

 

Complainant contends Respondent’s <assurantdata.us> domain name is confusingly similar to Complainant’s ASSURANT mark.  The disputed domain name incorporates Complainant’s ASSURANT mark in its entirety with the addition of the generic term “data” and the country code top-level domain (“ccTLD”) “.us” which Complainant alleges do not significantly distinguish Respondent’s domain name from Complainant’s ASSURANT mark..  Based on the findings of previous panels, the Panel finds confusing similarity between the disputed domain name and Complainant’s ASSURANT mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). 

 

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

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the <assurantdata.us>  domain name.  Previous panels have found that the burden of proving Respondent lacks rights or legitimate interests rests with Complainant.  Once Complainant has made a prima facie showing in support of its allegations the burden then shifts to the respondent to prove it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has made a prima facie showing and, because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <assurantdata.us>  domain name.  However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the <assurantdata.us>  domain name under Policy ¶ 4(c).  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”). 

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <assurantdata.us>  domain name.  Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant alleges Respondent is not commonly known by the <assurantdata.us>  domain name.  Respondent has not alleged any evidence supporting a finding that it is known by that name and the Panel cannot find any evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name.  The WHOIS information lists the registrant of the disputed domain name as “Nicholas Suchyta,” which Complainant alleges is not similar to the <assurantdata.us> domain name.  Further, Complainant alleges that it has not authorized or licensed Respondent to use its ASSURANT mark.  Thus, the Panel finds that Respondent is not commonly known by the <assurantdata.us> domain name under Policy ¶ 4(c)(iii).  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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply).

                                               

The disputed <assurantdata.us>  domain name resolves to a website that is inactive.  Complainant alleges inactivity is further proof of Respondent’s lack of rights or legitimate interests in the domain name.  The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iv).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either UDRP ¶ 4(c)(i) or UDRP ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).  

 

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

 

Registration and Use in Bad Faith

 

The Panel finds that it is allowed to conduct a totality of the circumstances analysis under Policy ¶ 4(a)(iii), and that it is not restrained by the explicit factors in Policy ¶ 4(b).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the [UDRP], is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).

 

Complainant alleges that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii).  The <assurantdata.us> domain name resolves to a website that is inactive.  The Panel finds that such use falls under the bad faith provision set forth in Policy ¶ 4(a)(iii).  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under UDRP ¶ 4(a)(iii); see also 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).

 

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

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <assurantdata.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  December 10, 2010

 

 

 

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