national arbitration forum

 

DECISION

 

Business Men's Insurance Corp. v. Misak Tadevossian

Claim Number: FA1011001359606

 

PARTIES

Complainant is Business Men's Insurance Corp. (“Complainant”), represented by Jesus Sanchelima of Sanchelima & Associates, P.A., Florida, USA.  Respondent is Misak Tadevossian (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bmiinsurance.com>, registered with Brandon Gray Internet Services, Inc. d/b/a namejuice.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2010; the National Arbitration Forum received payment on November 20, 2010.

 

On December 7, 2010, Brandon Gray Internet Services, Inc. d/b/a namejuice.com confirmed by e-mail to the National Arbitration Forum that the <bmiinsurance.com> domain name is registered with Brandon Gray Internet Services, Inc. d/b/a namejuice.com and that Respondent is the current registrant of the name.  Brandon Gray Internet Services, Inc. d/b/a namejuice.com has verified that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a namejuice.com 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 December 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2011 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@bmiinsurance.com.  Also on December 14, 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 January 5, 2011 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 (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 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 <bmiinsurance.com> domain name is identical/confusingly similar to Complainant’s BMI mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Business Men's Insurance Corp., uses its BMI mark for underwriting of health and life insurance for others.  Complainant owns a trademark registration for its BMI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,425,936 issued January 20, 1987).

 

Respondent, Misak Tadevossian, registered the disputed domain name on February 9, 2004.  The disputed domain name resolves to a website offering, and related to, insurance services. 

 

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 asserts rights in its BMI mark based on its registration of the same with the USPTO (Reg. No. 1,425,936 issued January 20, 1987).  Previous panels have held that a complainant’s registration of a mark with the USPTO is sufficient evidence of the complainant’s rights in the mark.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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)).  Therefore, the Panel concludes that in this case, Complainant has established rights in its BMI mark for the purposes of Policy ¶ 4(a)(i). 

 

Complainant argues that Respondent’s <bmiinsurance.com> domain name is confusingly similar to Complainant’s BMI mark.  The disputed domain name incorporates the entirety of Complainant’s mark and adds the descriptive terms “insurance” and the generic top-level domain (“gTLD”) “.com.”  Previous panels have concluded that neither the addition of a term that is descriptive of a complainant’s business, nor a gTLD, are sufficient to properly distinguish a disputed domain name from a mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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.”).  Accordingly, pursuant to Policy ¶ 4(a)(i), the Panel determines that Respondent’s <bmiinsurance.com> domain name is confusingly similar to Complainant’s BMI mark.

 

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

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden then shifts to Respondent to provide evidence that it does have rights or legitimate interests in the disputed domain name.  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 that the allegations set forth in the Complaint establish a prima facie case.  Respondent’s lack of rights and legitimate interests may also be inferred from Respondent’s failure to submit a Response in these proceedings.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.

 

The WHOIS information for the disputed domain name indicates that the registrant is “Misak Tadevossian.”  There does not appear to be any other evidence in the record to support a finding that Respondent is commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <bmiinsurance.com> domain name under Policy ¶ 4(c)(ii).  See 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); see also 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).

 

Respondent’s disputed domain name resolves to a website featuring insurance information and insurance services.  Previous panels have held that where a respondent is using a confusingly similar disputed domain name to offer, and likely profit from, services that compete with those offered by a complainant, the respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).  The Panel here assumes that Respondent profits from its offering of insurance services and information and therefore finds that Respondent’s use of the disputed domain name is not 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). 

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a website featuring insurance information and services in competition with Complainant’s offerings under its BMI mark.  Previous panels have found that where a respondent registered and used a disputed domain name to offer services in competition with a complainant, the respondent’s conduct amounted to a disruption of the complainant’s business.  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).  Therefore, the Panel in this case concludes that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

Additionally, the Panel presumes that Respondent profits in some way from the information and services it offers via its resolving website.  Previous panels have held that a respondent’s registration and use of a confusingly similar disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion among Internet users as to a complainant’s affiliation with the disputed domain name, is evidence of bad faith.  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).  Thus, the Panel here determines that Respondent has displayed conduct amounting to bad faith registration and use under Policy ¶ 4(b)(iv). 

 

The Panel finds that 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 <bmiinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  January 7, 2011

 

 

 

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