national arbitration forum

 

DECISION

 

Auto-Owners Insurance Company v. Nokta Internet Technologies / DNS Admin

Claim Number: FA1201001423534

 

PARTIES

Complainant is Auto-Owners Insurance Company (“Complainant”), represented by Ron Brittain, Michigan, USA.  Respondent is Nokta Internet Technologies / DNS Admin (“Respondent”), represented by Paul Keating of Law.es, Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <autoownersinsurance.com>, registered with Moniker Online Services, LLC.

 

PANEL

The undersigned certify that  they have acted independently and impartially and to the best of their knowledge have  no known conflict in serving as Panelists in this proceeding.

 

Honorable Nelson A. Diaz, Chair, Honorable Bruce E. Meyerson Esq., and Professor David E. Sorkin as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2012; the National Arbitration Forum received payment on January 13, 2012.

 

On January 10, 2012, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <autoownersinsurance.com> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name.  Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@autoownersinsurance.com.  Also on January 17, 2012, 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.

 

A timely Response was received and determined to be complete on February 6, 2012.  Complainant submitted a timely Additional Submission on February 13, 2012.

 

On February 15th, 2012, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz, Honorable Bruce E. Meyerson Esq and Professor David E. Sorkin, as Panelists.

 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant argues that it has rights in the AUTO-OWNERS mark. Complainant asserts that the disputed domain name’s current use is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant further alleges that bad faith concerning the registration and previous use of the disputed domain name is demonstrated by Respondent’s intent to create confusion as to the source of the <autoownersinsurance.com> domain name and to commercially benefit from Internet users’ mistakes.  Respondent has no registered Service Mark for the use of Complainant’s company name.  Respondent is not in the business of selling insurance and the website is merely a listing of quotes for competing insurance companies.  By using Complainant’s Service Mark and offering links to competing insurance companies, Respondent confuses the average consumer and infringes upon Complainant’s registered Service Mark.  The domain name merely eliminates the hyphen between “auto” and “owners” and does not provide any tangible service other than generating advertising revenue based on the infringement of Complainant’s Service Marks.  There is no bona fide offering of goods or services and the domain name has not been in service longer than the name “Auto-Owners Insurance Company,” which dates back to the early 1900’s.  Furthermore, there is no legitimate noncommercial or fair use of the domain name because the website is used only for advertising revenue purposes.  The intent of the domain name is to mislead those consumers searching for Auto-Owners Insurance Company who become redirected to this website, which tarnishes Complainant’s registered Service Marks and company image. The website does not provide customer reviews, goods, services, quotes, specialized information, or any other legitimate service to consumers.  It is a pay-per-click website used to generate advertising revenue for the Respondent.  The use of a domain name to mislead users to access these types of websites in order to increase traffic has been held to be a form of bad faith use.

  

B. Respondent

Respondent contends that the <autoownersinsurance.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, Respondent argues that the <autoownersinsurance.com> domain name is not confusingly similar to Complainant’s AUTO-OWNERS mark. Respondent argues that any confusion is eliminated with the addition of the term “insurance” to the disputed domain name and the consequential elongation of the <autoownersinsurance.com> domain name because no Internet user would mistake the addition as being descriptive of Complainant rather than being an indication of the disputed domain name’s independence from Complainant. Respondent contends that the simple assertion of legal conclusions, without more, does not push the burden of proof to Respondent, and that, even if it does, Complainant’s simple allegations are not strong enough to withstand a dispute of those claims in a response. Respondent contends that the disputed domain name is comprised of common and descriptive terms and thus cannot be deemed confusingly similar to Complainant’s mark. Respondent further contends that it has rights and legitimate interests in the disputed domain name as is shown by its use of the <autoownersinsurance.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent argues that it acquired the <autoownersinsurance.com> domain name on April 4, 2002, began using the disputed domain name as a search tool for information relating to insurance, and then developed the website. Respondent contends that it has been operating a parked, pay-per-click website at the <autoownersinsurance.com> domain name since it developed the website, which is a continuation of the use since August 21, 1999 when the disputed domain name was first registered. Respondent asserts that it spent time and effort going through an intensive process in which it selected the preferred parking company and search engine feed as well as providing automated instructions to ensure that the results are contextually related to the words comprising the disputed domain name and are not related to obvious trademarks which are known from searches or other standard due diligence. Respondent also argues that the terms of the <autoownersinsurance.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet Respondent argues that Complainant’s failure to dispute the registration and use of the <autoownersinsurance.com> domain name earlier allows the Panel to deny the transfer of the domain name. Respondent argues that Complainant has waited more than 12 years after the initial registration of the <autoownersinsurance.com> domain name on August 21, 1999 and more than nine years since Respondent’s registration of the <autoownersinsurance.com> domain name on April 19, 2002. Respondent alleges that Complainant is only now attempting to have the disputed domain name transferred in order to take advantage of its higher value than Complainant’s current domain name. Respondent argues that the value of all of Complainant’s assertions is seriously diminished by Complainant’s failure to act sooner to protect its trademark.

 

C. Additional Submissions

Complainant, Auto-Owners Insurance Company, is among the leading property and casualty insurers in the United States.  Complainant was organized in Mt. Pleasant, Michigan in 1916 under the name Auto-Owners Insurance Company.  In 1917, the company was moved to Lansing, Michigan.  Complainant continues to be headquartered in Lansing, Michigan.  Complainant is licensed to conduct business in thirty-one (31) states in the United States and conducts business in twenty-six (26) of those states.  Complainant has over 37,000 agents and over 6,200 agencies.  Complainant has over four (4) million policies in force in the United States.  Complainant has written premiums exceeding $4 billion. Complainant has been continuously using the mark Auto-Owners Insurance and Auto-Owners since its inception in 1916 [Exhibit A].  In addition to owning the incontestable, valid trademark.

 

FINDINGS

The Respondent has violated the ICANN Policy under Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii) and Policy ¶ 4(c)(i).

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Many panels have found that a complainant’s registration of a mark with a federal trademark authority is sufficient to find that the complainant has rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The panels in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), expanded upon this by noting that trademark registration confers rights to the registrant in the mark no matter where the parties to a dispute are located. Complainant argues that its trademark registration demonstrates that the AUTO-OWNERS mark is not made up of generic terms, and that the mark has acquired distinction. The Panel finds that Complainant has rights in the AUTO-OWNERS mark under Policy ¶ 4(a)(i).

 

The Panel finds that the omission of a hyphen from Complainant’s mark in the disputed domain name does not remove the confusion caused by incorporating Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). The Panel also finds that the addition of the term “insurance,” which describes the business of Complainant, fails to distinguish the disputed domain name from the AUTO-OWNERS mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also 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). Finally, the Panel finds that the affixation of the generic top-level domain (“gTLD”) “.com” to the mark in the disputed domain name is irrelevant for purposes of confusing similarity. 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).The Panel finds that the omission of a hyphen, addition of a descriptive term, and addition of a gTLD fail to make the <autoownersinsurance.com> domain name distinct from the AUTO-OWNERS mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Although Respondent contends that Complainant’s mark contains common terms and therefore cannot be confusingly similar to the domain name, such a determination is unnecessary because  this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

Rights or Legitimate Interests

 

 

Complainant has the ultimate burden of proving that Respondent lacks rights or legitimate interests. The Panel finds that Complainant has met that burden of proof. The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent has no service or trademark that reflects the parts of the <autoownersinsurance.com> domain name and that Respondent does not engage in the business of selling insurance as the disputed domain name would suggest. Furthermore, the WHOIS record for the disputed domain name demonstrates that the <autoownersinsurance.com> domain name was registered on April 19, 2002, and that “Nokta Internet Technologies / DNS Admin” is listed as the domain name registrant. The Panel finds that the information available does not suggest otherwise, and the Panel finds that Respondent is not commonly known by 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 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).

 

Complainant demonstrates that the disputed domain name previously resolved to a website which displays a listing of quotes for insurance companies competing with Complainant under headings such as “Progressive Insurance” and “21st Century Insurance.” Panels have found that the display of links to a complainant’s competitors is not a use which gives the respondent rights or legitimate interests in a disputed domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s previous use of the disputed domain name is neither a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.

 

The evidence Complainant provides of the disputed domain name’s content shows that the disputed domain name currently resolves to an inactive website. Panels have found that the holding of an inactive website is not a protected use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that the Respondent’s non-use of the <autoownersinsurance.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and was previously using the disputed domain name in bad faith. Complainant asserts under Policy ¶ 4(a)(iii) that the <autoownersinsurance.com> domain name previously resolved to a website which displayed links to insurance companies that offered similar services as those provided by Complainant. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panels found that bad faith is evident where a disputed domain name is registered and used in order to display links to the complainant’s competitors because it is disruptive to the complainant’s business. The Panel finds bad faith in Respondent’s registration and use since Respondent’s <autoownersinsurance.com> domain name was registered and used to display links to Complainant’s competitors disrupts Complainant’s business, revealing bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

Complainant argues that Respondent’s prior use of the disputed domain name was to display links to Complainant’s competitors, for which the Panel infers that Respondent received referral fees. Complainant argues that the confusing similarity of the domain name coupled with the similar, yet competitive, content at the disputed domain name will cause confusion as to the source of the <autoownersinsurance.com> domain name. The Panel finds that Respondent registered and previously used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) since the nature and content of the disputed domain name will cause confusion as to the source of the <autoownersinsurance.com> domain name in that Respondent may profit. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).”).

 

The Panel finds that the doctrine of laches does not apply as a defense in this case, and correspondingly chooses to disregard Respondent’s assertions.  See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy.  Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark.  Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).

 

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

 

Honorable Nelson A. Diaz, Chair, Honorable Bruce E. Meyerson Esq., and Professor David E. Sorkin, Panelists

Dated:  February 21st , 2012

 

 

 

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