national arbitration forum

 

DECISION

 

Liberty Mutual Insurance Company v. JJ Dynamics S.A

Claim Number: FA1107001398436

 

PARTIES

Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse, Massachusetts, USA.  Respondent is JJ Dynamics S.A (“Respondent”), Costa Rica.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mutuallibertysweeps.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically July 13, 2011; the National Arbitration Forum received payment July 13, 2011.

 

On July 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mutuallibertysweeps.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and 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 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@mutuallibertysweeps.com.  Also on July 20, 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 August 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.    The domain name that Respondent registered,  <mutuallibertysweeps.com>, is confusingly similar to Complainant’s LIBERTY MUTUAL mark.

 

2.    Respondent has no rights or legitimate interests in the <mutuallibertysweeps.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, Liberty Mutual Insurance Company, is an international provider of insurance and financial services.  Complainant serves customers through its more than 45,000 employees in some 900 worldwide offices.  Complainant owns several trademark registrations for its LIBERTY MUTUAL mark with many governmental trademark authorities worldwide, including registrations with the following:

 

1.    United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,405,249 registered August 12, 1986);

2.    European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 1,743,855 registered February 19, 2003);

3.    Argentina’s National Institute of Industrial Property (“NIIP”) (Reg. No. 1.674.448 registered July 14, 1998);

4.    Brazil’s Instituto Nacional Da Propriedade Industrial (“INPI”) (e.g., Reg. No. 821256106 registered March 30, 1999); and

5.    Colombia’s Superintendencia Industria y Comercio (“SIC”) (e.g., Reg. No. 230571 registered December 5, 2002).

 

Respondent, JJ Dynamics S.A, registered the <mutuallibertysweeps.com> domain name January 29, 2011.  Respondent’s disputed domain name resolves to a website that appears to be a sweepstakes website that has been linked to a scam website in which users pay a fee up front in order to claim their “prize,” which does not in fact exist. 

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant presented evidence to show that it owns valid trademark registrations for its LIBERTY MUTUAL mark with several governmental trademark authorities worldwide.  Through such registrations with the USPTO (e.g., Reg. No. 1,405,249 registered August 12, 1986); OHIM (e.g., Reg. No. 1,743,855 registered February 19, 2003); NIIP (Reg. No. 1.674.448 registered July 14, 1998); INPI (e.g., Reg. No. 821256106 registered March 30, 1999); and SIC (e.g., Reg. No. 230571 registered December 5, 2002), Complainant has established rights in its mark under Policy ¶ 4(a)(i).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).  Further, the Panel notes that Complainant does not need to own a trademark registration in the country of Respondent’s residence in order to establish rights in its mark under Policy ¶ 4(a)(i).  See 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant contends that Respondent’s <mutuallibertysweeps.com> domain name is confusingly similar to its LIBERTY MUTUAL mark.  While Complainant argues that the domain name instills confusion in consumers as to Complainant’s involvement with the resolving website, the Panel notes that such an argument is inapplicable under Policy ¶ 4(a)(i).  See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law). 

 

However the Panel does note that the domain name at issue contains a version of Complainant’s mark in which the terms are merely transposed and the space between the terms omitted.  Further, the domain name adds the generic term “sweeps” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that none of the above noted changes to Complainant’s mark are sufficient to render the domain name unique from Complainant’s mark, thus rendering the two confusingly similar under Policy ¶ 4(a)(i).  See Pearl Jam, A Gen. P’ship v. Lyn, FA 221238 (Nat. Arb. Forum Feb. 16, 2004) (finding that merely transposing the elements of a mark in a domain name, in this case PEARL JAM in the <jampearl.com> domain name, does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also 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).

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent does not have rights to or legitimate interests in the <mutuallibertysweeps.com> domain name.  Complainant is required to make a prima facie case to support these allegations under Policy ¶ 4(a)(ii).  Once the Complainant has done so, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).

 

The Panel finds that Complainant made a prima facie case.  Due to the Respondent’s failure to respond to these proceedings the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  Nonetheless, this Panel still evaluates the evidence on record to determine whether it suggests that Respondent has rights and legitimate interests in the <mutuallibertysweeps.com> domain name under Policy ¶ 4(c). 

 

Complaint argues that Respondent is not commonly known by the <mutuallibertysweeps.com> domain name and that Complainant has not given Respondent permission to use Complainant’s mark.  The WHOIS information identifies “JJ Dynamics S.A” as the registrant of the <mutuallibertysweeps.com> domain name, and no evidence suggests that Respondent is commonly known by the disputed domain name.  The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant submits evidence and arguments to show that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Complainant contends that Respondent’s disputed domain name resolves to a website that appears to be that of the official “U.S. Sweeps” website, which does official giveaways of products and goods.  Complainant argues that Respondent’s website works fraudulently to acquire personal information from Internet users, which is later used to contact them about their “prize,” while claiming to be part of Complainant’s Boston, Massachusetts office.  However, the scam requires those contacted to pay a fee up front in order to receive their prize or winnings, at which point the perpetrators disappear with the unsuspecting victim’s money.  Complainant argues that using the domain name in such a fraudulent manner is proof that Respondent does not have rights or legitimate interests in the domain name.  The Panel agrees, and finds that Respondent’s use of the disputed domain name as a phishing scam, without the benefit of explanation from Respondent, 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).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services 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 that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive.  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith)  Thus, looking to all of the circumstances, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b).  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).   

 

In the instant proceeding Complainant has presented unrefuted evidence that indicates that Respondent is using the disputed domain name to perpetuate a fake “giveaway” scam.  Complainant argues that Respondent misleads Internet users into believing that they have won a prize, but that they cannot claim the prize until they pay a fee up front.  Complainant contends that when Respondent contacts the victims it claims to be a part of Complainant’s Boston, Massachusetts, office while giving Respondent’s address as contact information.  When the victims pay the fee up front in anticipation of their prize, the perpetrators disappear with the money never to be heard from again.  The Panel finds that such use of the confusingly similar domain name is clearly fraudulent, and is evidence that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <mutuallibertysweeps.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: August 23, 2011.

 

 

 

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