Liberty Mutual Insurance Company v. c/o SAFECOAUTOINSURANCE.COM
Claim Number: FA1101001366190
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse, Massachusetts, USA. Respondent is c/o SAFECOAUTOINSURANCE.COM (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safecoautoinsurance.com>, registered with Dotster, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2011; the National Arbitration Forum received payment on January 5, 2011.
On January 6, 2011, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <safecoautoinsurance.com> domain name is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 January 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 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@safecoautoinsurance.com. Also on January 6, 2011, 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 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <safecoautoinsurance.com> domain name is confusingly similar to Complainant’s SAFECO mark.
2. Respondent does not have any rights or legitimate interests in the <safecoautoinsurance.com> domain name.
3. Respondent registered and used the <safecoautoinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, is a Fortune 500 company which provides a wide array of insurance products throughout the United States and abroad. Complainant owns multiple trademark registrations for its SAFECO mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,057,198 issued January 25, 1977). Complainant utilizes the SAFECO mark to market and promote its business.
Respondent, c/o SafecoAutoInsurance.com, registered the disputed domain name on March 19, 2004. Respondent’s <safecoautoinsurance.com> domain name resolves to a pay-per-click site offering both competing and unrelated links to third-party websites.
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 that it has established its rights in the mark by registering its SAFECO mark with a federal trademark authority, the USPTO (e.g., Reg. No. 1,057,198 issued January 25, 1977). Previous panels have found that registering a mark with a federal trademark authority will affirmatively established a party’s rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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). Therefore, the Panel finds that Complainant has established its rights in the SAFECO mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO.
Complainant also contends that Respondent’s <safecoautoinsurance.com> domain name is confusingly similar to its own SAFECO mark. The disputed domain name incorporates the entire mark while adding the descriptive terms, “auto” and “insurance,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to differentiate its disputed domain name from Complainant’s mark by adding the two descriptive terms and the gTLD. Thus, the Panel finds that the two are confusingly similar under Policy ¶ 4(a)(i). 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for 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.”).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before Policy ¶ 4(a)(ii) shifts the burden of proof to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that based on the arguments contained in the Complaint, Complainant has satisfied its burden of presenting a prima facie case. Respondent failed to respond to these proceedings, thus failing to uphold its burden to prove that it has rights or legitimate interests in the disputed domain name. The Panel notes that Respondent’s failure to respond allows the Panel to take as true all of the allegations contained in the Complaint. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, in an effort to make a complete determination as to Respondent’s rights or legitimate interests with regard to the disputed domain name, the Panel elects to examine the record in light of the factors contained in Policy ¶ 4(c).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain since Respondent is not currently, and has never been, commonly known by the disputed domain name. Additionally, Complainant asserts that it has not licensed or otherwise authorized Respondent to use its SAFECO mark. The WHOIS information for the disputed domain name lists the registrant of the disputed domain name as “c/o SAFECOAUTOINSURANCE.COM.” The Panel finds that while it may appear from the WHOIS information that Respondent is nominally associated with the disputed domain name, without more, the Panel rejects a finding that Respondent is commonly known by the disputed domain name. There does not appear to be any other evidence in the record that would support a finding that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>] domain name.”).
Respondent’s disputed domain name resolves to a website that features links to websites both unrelated to, and competing with, Complainant’s insurance services business. The Panel presumes that Respondent receives revenue, in the form of click-through fees, each time an Internet users clicks on any of the aforementioned links. Thus, the Panel finds that 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 pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 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).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
The Panel finds that Respondent’s disputed domain name resolves to a website that displays links to Complainant’s competitors in the insurance services industry. Thus, the Panel finds that Respondent’s registration and use of the disputed domain name constitutes a disruption of Complainant’s business and is therefore 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 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).”).
Complainant suggests that Respondent receives monetary compensation based on the links to third-party websites that are displayed on the website resolving from the <safecoautoinsurance.com> domain name. Complainant argues that Respondent registered, and is using, the disputed domain name with the intention 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. The Panel concurs and finds that Respondent has demonstrated bad faith registration and use according to Policy ¶ 4(b)(iv). 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 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 that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <safecoautoinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 10, 2011
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