Liberty Mutual Insurance Company v. Domain Administrator
Claim Number: FA1012001364077
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse of Liberty Mutual Insurance Company, Massachusetts, USA. Respondent is Domain Administrator (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safecoinsurnace.com>, registered with Fabulous.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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2010; the National Arbitration Forum received payment on December 17, 2010.
On December 19, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <safecoinsurnace.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.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 December 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@safecoinsurnace.com. Also on December 29, 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 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 <safecoinsurnace.com> domain name is confusingly similar to Complainant’s SAFECO mark.
2. Respondent does not have any rights or legitimate interests in the <safecoinsurnace.com> domain name.
3. Respondent registered and used the <safecoinsurnace.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, owns a trademark with the United States Patent and Trademark Office (“USPTO”) for its SAFECO mark (e.g., Reg. No. 1,057,198 issued January 25, 1977) in connection with its financial and insurance services. Complainant also owns and operates the <safecoinsurance.com> domain name, along with multiple other domain names incorporating Complainant’s SAFECO mark.
Respondent registered the disputed domain name on January 2, 2010. The disputed domain name resolves to a website featuring pay-per-click links to third-party websites offering competing insurance products and services as well as unrelated third-party sites.
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 contends it has rights in its SAFECO mark based on its longstanding registration of the mark with the USPTO (e.g., Reg. No. 1,057,198 issued January 25, 1977). The Panel finds Complainant’s registration of its SAFECO mark with a federal trademark authority such as the USPTO is conclusive evidence of Complainant’s rights in the mark under Policy ¶4(a)(i). See 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.”); see also 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 Policy ¶4(a)(i) through registration of the mark with the USPTO).
Complainant alleges Respondent’s <safecoinsurnace.com> domain name is confusingly similar to Complainant’s SAFECO mark. Respondent’s disputed domain name contains the entirety of Complainant’s mark and merely adds a misspelled version of the descriptive term “insurance” and the generic top-level domain (“gTLD”) “.com.” The Panel finds these two additions do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied). Therefore, the Panel finds that Respondent’s <safecoinsurnace.com> domain name is confusingly similar to Complainant’s SAFECO mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Policy ¶4(a)(ii) first requires Complainant make a prima facie case in support of its allegations Respondent lacks rights and legitimate interests in the disputed domain name before the burden shifts to Respondent who must then prove 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 Complainant has made a prima facie case in support of its allegations, effectively shifting the burden to Respondent to establish rights or legitimate interests in the <safecoinsurnace.com> domain name. Respondent has failed to submit a Response to these proceedings and thus has not produced any evidence that would indicate it has any rights or legitimate interests in the disputed domain name. Respondent’s failure to respond to these proceedings allows the Panel to infer Respondent lacks such rights and legitimate interests. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). Nevertheless, this Panel will examine the record in light of the factors contained in Policy ¶4(c) to make a complete determination.
Complainant alleges Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not, and has never been, commonly known by the disputed domain name. The WHOIS information fails to identify the registrant of the disputed domain name as being even nominally connected to the <safecoinsurnace.com> domain name. The Panel finds the failure of the WHOIS information to reflect Respondent is commonly known by the disputed domain name supports a finding Respondent lacks rights and legitimate interests 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). Additionally, Complainant argues it has never authorized or licensed Respondent to use its SAFECO mark in a domain name. The Panel finds this to be further evidence supporting its conclusion Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(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).
Based on the screenshot evidence provided by Complainant, the Panel concludes Respondent is using the disputed domain name to resolve to a website which displays pay-per-click links to insurance related products and services in competition with Complainant. The Panel finds Respondent likely profits from this use and thus it is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
The Panel finds Respondent’s registration and use of the disputed domain name amounts to bad faith under Policy ¶4(b)(iii). Previous panels have held that a respondent’s use of a confusingly similar disputed domain name to redirect Internet users to the websites of a complainant’s competitors via pay-per-click links constitutes a disruption of a complainant’s business. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”). Respondent’s disputed domain name in this case resolves to a website that displays pay-per-click links to Complainant’s competitors in the insurance industry. The Panel finds there to be sufficient evidence to warrant a finding of bad faith registration and use pursuant to Policy ¶4(b)(iii).
Complainant contends Respondent selected the <safecoinsurnace.com> domain name for the purpose of attracting, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant also contends Respondent likely receives “click-through” fees each time an Internet user selects on of the third-party links displayed on Respondent’s resolving website. The Panel finds Complainant’s unopposed arguments are supported by sufficient evidence in this proceeding and therefore a finding of bad faith registration and use pursuant to Policy ¶4(b)(iv) is appropriate. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also 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)).
The Panel finds Policy ¶4(a)(iii) 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 <safecoinsurnace.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 24, 2011
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