Liberty Mutual Insurance Company v. Schabi Azabi
Claim Number: FA1111001415097
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Wendy L. Savage, Massachusetts, USA. Respondent is Schabi Azabi (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <lkbertymutual.com> and <libertymutuao.com>, registered with Internet.bs Corp.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2011; the National Arbitration Forum received payment on November 10, 2011.
On November 13, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <lkbertymutual.com> and <libertymutuao.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@lkbertymutual.com and postmaster@libertymutuao.com. Also on November 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lkbertymutual.com> and <libertymutuao.com> domain names are confusingly similar to Complainant’s LIBERTY MUTUAL mark.
2. Respondent does not have any rights or legitimate interests in the <lkbertymutual.com> and <libertymutuao.com> domain names.
3. Respondent registered and used the <lkbertymutual.com> and <libertymutuao.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, is a multi-line insurer in the property and casualty field with over 900 offices worldwide. Complainant owns trademark registrations for the LIBERTY MUTUAL mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,405,249 registered August 12, 1986 &
Reg. No. 2,734,195 registered July 8, 2003.
Respondent, Schabi Azabi, registered the <libertymutuao.com> and <lkbertymutual.com> domain names on December 4, 2010. The disputed domain names resolve to directory websites featuring a listing of pay-per-click links to competing insurance providers and 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 owns trademark registrations for the LIBERTY MUTUAL mark with the USPTO:
Reg. No. 1,405,249 registered August 12, 1986 &
Reg. No. 2,734,195 registered July 8, 2003.
The Panel finds that these USPTO trademark registrations are sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i), even though Respondent does not live or operate in the U.S. 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 argues that Respondent’s <libertymutuao.com> and <lkbertymutual.com> domain names are confusingly similar to Complainant’s LIBERTY MUTUAL mark as both domain names differ by only letter from Complainant’s mark—either exchanging the letter “l” for the letter “o” or exchanging the letter “i” for the letter “k”—and adding the generic top-level domain (“gTLD”) “.com” to the mark. Past panels have found that misspelling a complainant’s mark by exchanging one letter for another is insufficient to negate a finding of confusing similarity. See 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”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Past cases have also repeatedly shown that adding a gTLD to a mark does not differentiate the disputed domain name for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel thus concludes that Respondent’s <libertymutuao.com> and <lkbertymutual.com> domain names are confusingly similar to Complainant’s LIBERTY MUTUAL mark pursuant to Policy ¶ 4(a)(i).
The Panel determines Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant puts forth a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain names according to Policy ¶ 4(a)(ii). The Panel finds that Complainant put forth a sufficient prima facie case in these proceedings. As Respondent failed to respond to the allegations made against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks any rights and legitimate interests in the disputed domain names. 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 complainant.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights or legitimate interests in the disputed domain names.
Complainant asserts that Respondent has never been known as, and is not currently known as, either disputed domain name. Complainant further contends that it has not licensed or otherwise authorized Respondent to use the LIBERTY MUTUAL mark or any variation. The WHOIS information for the disputed domain names lists the registrant as “Schabi Azabi,” which has no apparent connection to the disputed domain names. Based on this evidence and Respondent’s failure to provide other evidence linking its identity to the disputed domain names, the Panel concludes that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests in the disputed domain names according to Policy ¶ 4(c)(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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent’s disputed domain names resolve to pay-per-click websites advertising competing insurance providers and services via links. The Panel presumes that Respondent operates these resolving websites as a commercial venture, profiting when Internet users click on any of the links displayed. The Panel finds that maintaining a website of this sort is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with complainant was not 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 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 determines Policy ¶ 4(a)(ii) has been satisfied.
Complainant does not make any specific allegations under Policy ¶ 4(b)(iii). Complainant does assert, however, that the disputed domain names resolve to directory websites that display a variety of pay-per-click links to third-party websites advertising competing insurance providers and services. The Panel finds that Respondent’s operation of these websites disrupts Complainant’s business as Internet users originally seeking Complainant are instead confronted with multiple competing services or companies. The Panel finds that these disruptive practices demonstrate bad faith registration and use 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 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)).
Complainant does not make any specific allegations under Policy ¶ 4(b)(iv) but Complainant does argue that Respondent intentionally registered two typographical errors of Complainant’s mark as the disputed domain names. Complainant asserts that Respondent registered these misspellings in order to take advantage of the fame of Complainant’s mark to attract consumers and create confusion concerning the relationship or affiliation between Complainant and Respondent. Complainant contends that Respondent uses these resolving websites for commercial gain as Respondent presumably receives pay-per-click fees for redirected Internet users to third-party websites via the displayed links. The Panel finds that Respondent’s actions reveal an intent to attract consumers and create confusion through misappropriation of Complainant’s mark for Respondent’s own commercial gain, which is evidence of bad faith registration and use pursuant 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel determines Policy ¶ 4(a)(iii) has been 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 <lkbertymutual.com> and <libertymutuao.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 22, 2011
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