21st Century Insurance and Financial Services, Inc. v. Publisher Guru
Claim Number: FA1012001363714
Complainant is 21st Century Insurance and Financial Services, Inc. (“Complainant”), represented by Richard J. Groos of Fulbright & Jaworski, Texas, USA. Respondent is Publisher Guru (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <21centuryinsurance.net>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2010; the National Arbitration Forum received payment on December 17, 2010.
On December 16, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <21centuryinsurance.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 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@21centuryinsurance.net. Also on December 17, 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <21centuryinsurance.net> domain name is confusingly similar to Complainant’s 21ST CENTURY INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <21centuryinsurance.net> domain name.
3. Respondent registered and used the <21centuryinsurance.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 21st Century Insurance and Financial Services, Inc., sells automobile, motorcycle, and personal insurance. Complainant conducts its insurance business under the 21ST CENTURY INSURANCE mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,060,562 issued February 21, 2006).
Respondent registered the <21centuryinsurance.net> domain name on February 11, 2010. The disputed domain name resolves to a website imitating Complainant’s website where it offers insurance services that are very similar to those of Complainant.
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.
Complainant alleges it has established rights in the 21ST CENTURY INSURANCE mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,060,562 issued February 21, 2006). Registering a mark with a federal trademark authority is sufficient to establish rights in the mark thus satisfying the requirements set forth in Policy ¶ 4(a)(i). The Panel finds Complainant has established rights in the mark based on its registration of the mark with the USPTO. 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also alleges that Respondent’s <21centuryinsurance.net> domain name is confusingly similar to Complainant’s 21ST CENTURY INSURANCE mark. The disputed domain name includes the majority of Complainant’s mark except for the removal of “ST” after the “21ST” found in Complainant’s mark. Additionally, Respondent removed the spaces between the terms of Complainant’s mark and merely added the generic top-level domain (“gTLD”) “.net” to Complainant’s mark. Complainant contends that removing letters and spaces from an established mark as well as adding a gTLD are insufficient in distinguishing the disputed domain name from Complainant’s mark. The Panel finds accordingly. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also American 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.”).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lacks rights or legitimate interests in the <21centuryinsurance.net> domain name. Complainant must first make a prima facie showing in support of its allegations, and then the burden shifts to Respondent to show it does have 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 presume Respondent lacks 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.”); 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.”). However, the Panel will examine the record further to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts Respondent is not commonly known by the disputed domain name and that Complainant never authorized Respondent to use the 21ST CENTURY INSURANCE mark. The Panel searched the record and can find no information that would support a finding that Respondent is commonly known by the <21centuryinsurance.net> domain name. Additionally, the WHOIS information lists the registrant of the disputed domain name as “Publisher Guru” which Complainant alleges is not similar to the disputed domain name. Therefore, the Panel finds, pursuant to Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <21centuryinsurance.net> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent used the disputed domain name to direct Internet users to a website that closely resembles Complainant’s own insurance website. Much of the information found on Complainant’s website can be found on the website resolving from the disputed domain name. The Panel presumes that Respondent benefits from the website and finds that using Complainant’s mark and the recognition surrounding that mark as a means of attracting Internet users to Respondent’s own website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Respondent’s domain name and resolving website closely resembles that of Complainant giving every appearance it is associated or affiliated with Complainant’s insurance business. Complainant asserts that many of the same designs and logos from its website can also be found on the website resolving from Respondent’s disputed domain name. Complainant alleges that the resemblance between its website and that of Respondent creates confusion among Internet users looking for Complainant’s business and that Respondent benefits financially from this confusion. The Panel surmises that Respondent registered the disputed domain name in order to profit from the disputed domain name and resolving website. The Panel finds this to be evidence of bad faith registration and use and because Complainant has established rights in the mark, the Panel supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Furthermore, Complainant contends that Respondent is attempting to pass itself off as Complainant through its use of the <21centuryinsurance.net> domain name. The Panel finds this to be additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <21centuryinsurance.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 24, 2011
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