Assurant, Inc. v. PC Rescuers / Ronald Williams
Claim Number: FA1112001420501
Complainant is Assurant, Inc. (“Complainant”), represented by Nadya Munasifi Sand of Alston & Bird, LLP, Georgia, USA. Respondent is PC Rescuers / Ronald Williams (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurantit.com>, registered with FastDomain 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2011; the National Arbitration Forum received payment on December 19, 2011«DateHardCopy».
On December 19, 2011, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <assurantit.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 December 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 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@assurantit.com. Also on December 20, 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 January 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <assurantit.com> domain name is confusingly similar to Complainant’s ASSURANT mark.
2. Respondent does not have any rights or legitimate interests in the <assurantit.com> domain name.
3. Respondent registered and used the <assurantit.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Assurant, Inc., provides insurance and financial services under the ASSURANT mark. Complainant has registered the ASSURANT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,543,367 registered February 26, 2002).
Respondent, PC Rescuers / Ronald Williams, registered the <assurantit.com> domain name on January 24, 2011. The disputed domain name previously resolved to a third party’s photography website located at the <ellgenphotography.com> domain name. The disputed domain name subsequently resolved to a website entitled “Assurant Information Technology and Computer Services,” purportedly offering computer repair services. The disputed domain name currently resolves to a website entitled “Noah’s Classified,” which allows third parties to advertise for various goods 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 a trademark registration for the ASSURANT mark with the USPTO (Reg. No. 2,543,367 registered February 26, 2002). Registration of a mark with the USPTO has long been a proven way to establish rights in a mark for the purposes of Policy ¶ 4(a)(i), as seen in Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006). Accordingly, the Panel finds that Complainant’s USPTO trademark registration indicates that Complainant has recognized rights in the ASSURANT mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <assurantit.com> domain name is confusingly similar to Complainant’s ASSURANT mark because Respondent begins the disputed domain name with Complainant’s mark, adding only the generic term “it” and the generic top-level domain (“gTLD”) “.com.” Panels have frequently regarded generic terms as inconsequential additions that fail to differentiate a disputed domain name from a mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark). Prior cases have also shown that panels disregard added gTLDs and do not view them as a distinguishing feature. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel here determines that Respondent’s <assurantit.com> domain name is confusingly similar to Complainant’s ASSURANT mark under Policy ¶ 4(a)(i).
The Panel holds that Complainant has proven Policy ¶ 4(a)(i).
In attempting to satisfy the requirements of Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent and then the burden shifts to Respondent to prove rights and legitimate interests. Although Complainant effectively made its initial case against Respondent, Respondent offered no answer or contentions in Response. As a result of Respondent’s lack of participation in these proceedings, the Panel may infer that Complainant’s contentions are accurate and that Respondent lacks rights and legitimate interests. 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.”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). In the interest of fairness, however, the Panel will continue the analysis according to the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent has no connection or affiliation of any kind with Complainant and that Complainant has never granted Respondent any license or consent to use the ASSURANT mark. Complainant further argues that the WHOIS information for the <assurantit.com> domain name, which identifies the registrant as “PC Rescuers / Ronald Williams,” does not make any indication that Respondent is commonly known by the disputed domain name. Based on these allegations and Respondent’s lack of arguments, the Panel concludes that Respondent is not commonly known by the <assurantit.com> domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant asserts that, at various times, the <assurantit.com> domain name has resolved to a third party’s photography website, an “Assurant Information Technology and Computer Services” website purportedly offering computer repair services, and an online classifieds website. Complainant argues that using the confusingly similar disputed domain name to resolve to third-party websites unrelated to Complainant or to unrelated websites run by Respondent is inconsistent with the requirements under Policy ¶¶ 4(c)(i) and 4(c)(iii) for a bona fide offering of goods or services or a legitimate noncommercial or fair. Based on relevant precedent, the Panel agrees with Complainant. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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 also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel holds that Complainant has proven Policy ¶ 4(a)(ii).
Complainant alleges that the various websites to which the <assurantit.com> domain name has resolved—the third party photography site, the website purportedly offering computer repair services, and the online classifieds website—are all associated with the disputed domain name for Respondent’s commercial gain. Complainant argues that Respondent has used Complainant’s ASSURANT mark to attempt to lure Internet users to these unrelated websites and create confusion as to whether Complainant is affiliated with, or sponsors, the resolving websites. Complainant argues that Respondent takes advantage of Complainant’s mark to link these websites to the disputed domain name for its own commercial gain, which is evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), and State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000), panels found that appropriating Complainant’s mark to attract Internet users to third-party unrelated websites, whether sponsored by Respondent or not, supported a finding of bad faith registration and use under Policy ¶ 4(b)(iv). In line with these prior decisions, the Panel concludes that Respondent’s activities have revealed bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s ASSURANT mark, it is inconceivable that Respondent could have registered the <assurantit.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. The Panel here finds that any arguments of bad faith based on constructive knowledge are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
The Panel holds that Complainant has proven Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <assurantit.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 26, 2012
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