Claim Number: FA1106001396648
Complainant is Assurant, Inc. (“Complainant”), represented by Theresa Conduah of Alston & Bird LLP, North Carolina, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <assuranthealthealthsales.com> and <assurantsolutins.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2011; the National Arbitration Forum received payment on July 5, 2011. The Complaint was submitted in both English and Slovak.
On July 4, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <assuranthealthealthsales.com> and <assurantsolutins.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.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 July 11, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of August 1, 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@assuranthealthealthsales.com, postmaster@assurantsolutins.com. Also on July 11, 2011, the Slovak language 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 August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <assuranthealthealthsales.com> domain name is confusingly similar to Complainant’s ASSURANT HEALTH mark.
Respondent’s <assurantsolutins.com> domain name is confusingly similar to Complainant’s ASSURANT SOLUTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <assuranthealthealthsales.com> and <assurantsolutins.com> domain names.
3. Respondent registered and used the <assuranthealthealthsales.com> and <assurantsolutins.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Assurant, Inc., owns the ASSURANT HEALTH and ASSURANT SOLUTIONS marks. The ASSURANT HEALTH mark has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,974,177 registered July 19, 2005). The ASSURANT SOLUTIONS mark has also been registered with the USPTO (Reg. No. 3,308,104 registered October 9, 2007). The ASSURANT HEALTH mark is used in connection with Complainant’s insurance and financial services, particularly health, disability, life, and dental insurance underwriting. The ASSURANT SOLUTIONS mark is used in connection with Complainant’s business marketing and consultation services as well as insurance underwriting services.
Respondent, Milan Kovac, registered the <assuranthealthealthsales.com> domain name on December 17, 2009. Respondent registered the <assurantsolutins.com> domain name on December 30, 2009. The disputed domain names resolve to websites which display links to competing insurance services.
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 rights in the ASSURANT HEALTH and ASSURANT SOLUTIONS marks. Panels have found that a complainant’s registration of a trademark with a federal trademark authority, regardless of whether the respondent lives or works there, is sufficient to establish rights in a mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant has evidenced its rights in the ASSURANT HEALTH mark by registration with the USPTO (Reg. No. 2,974,177 registered July 19, 2005). Likewise, Complainant has provided evidence of its registration with the USPTO of the ASSURANT SOLUTIONS mark (Reg. No. 3,308,104 registered October 9, 2007). The Panel thus finds that Complainant has established rights in its ASSURANT HEALTH and ASSURANT SOLUTIONS marks under Policy ¶ 4(a)(i).
Complainant contends that the <assuranthealthealthsales.com> domain name is confusingly similar to its ASSURANT HEALTH mark. Panels have consistently found that the addition of descriptive terms to a mark in a domain name is insufficient to distinguish the two. 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of the misspelled term “ealth” and the term “sales” which describe Complainant’s business are insufficient to distinguish the <assuranthealthealthsales.com> domain name from Complainant’s ASSURANT HEALTH mark. Additionally, the elimination of the spaces between the words of Complainant’s mark fail to make a difference to the Panel’s finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that the addition of the generic top-level domain (“gTLD”) “.com” does not adequately distinguish the <assuranthealthealthsales.com> domain name from Complainant’s mark. Therefore, the Panel finds that the <assuranthealthealthsales.com> domain name is confusingly similar to Complainant’s ASSURANT HEALTH mark under Policy ¶ 4(a)(i).
Complainant next asserts that the <assurantsolutins.com> domain name is confusingly similar to its ASSURANT SOLUTIONS mark. As discussed above, the addition of the gTLD “.com” and the elimination of spaces in the domain name are irrelevant to a Policy ¶ 4(a)(i) analysis. The misspelling of a word in a mark also fails to sufficiently differentiate a domain name from a mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent has fully incorporated Complainant’s ASSURANT SOLUTIONS mark except for the second “o” in “SOLUTIONS.” This minor change to Complainant’s mark is insufficient. Thus, the Panel finds that the <assurantsolutins.com> domain name is confusingly similar to Complainant’s ASSURANT SOLUTIONS mark.
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainants must first make a prima facie case before the burden shifts to the respondent to prove the complainant’s assertions are false. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also 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 Complainant has made a prima facie showing. Respondent failed to submit a Response to the Complaint. Accordingly, the Panel will assume that the Respondent does not dispute the truth of the claims, See 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.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). The Panel will review the record for information demonstrating any rights or legitimate interests Respondent may have in the disputed domain name.
Rights or legitimate interests may be found where a respondent is commonly known by a disputed domain name. The WHOIS information for the <assuranthealthealthsales.com> domain name lists “Milan Kovac” as the domain name registrant. The domain name registrant listed for the <assurantsolutins.com> domain name is “Milan Kovac.” Respondent’s failure to respond to the Complaint and Complainant’s claims that Respondent has no authority to be using either of its marks suggests to the Panel that Respondent was in no way connected to the disputed domain names prior to the registration of the domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006). Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that the disputed domain names are being used for purposes other than a bona fide offering of goods or services or a legitimate noncommercial or fair use. The use of a disputed domain name to display links to websites which offer services competing with the complainant’s services is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) and TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002). Respondent’s <assuranthealthealthsales.com> and <assurantsolutins.com> domain names resolve to websites which display links to websites offering insurance services that are in direct competition for the same consumer-base as Complainant. Therefore, the Panel finds that Respondent’s use of the disputed domain names was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is met.
Respondent registered and uses the disputed domain names to display links to services in the insurance market which compete with those Complainant provides. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Displaying links on a disputed domain name, presumably garnering click-through fees for the respondent, evidences bad faith registration and use of the disputed domain names. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006). Respondent registered confusingly similar domain names. Internet users may assume that, due to the similar nature of the domain names, the domain names are associated with Complainant and its marks. The disputed domain names resolve to websites which display links to Complainant’s competitors. From these, Respondent presumably receives click-through fees. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names for the purpose of attracting Internet users for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <assuranthealthealthsales.com>, <assurantsolutins.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: August 17, 2011
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