Auto-Owners Insurance Company v. Alan Kelly / Noble Lowndes Corporation Limited
Claim Number: FA1201001423542
Complainant is Auto-Owners Insurance Company (“Complainant”), represented by Ron Brittain, Michigan, USA. Respondent is Alan Kelly / Noble Lowndes Corporation Limited (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autoownersinsurance.org>, registered with Wild West Domains, Inc. (R120-LROR).
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.
Diane Cabell, Terry F. Peppard and James A. Carmody (Chair) as Panelists.
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 9, 2012, Wild West Domains, Inc. (R120-LROR) confirmed by e-mail to the National Arbitration Forum that the <autoownersinsurance.org> domain name is registered with Wild West Domains, Inc. (R120-LROR) and that Respondent is the current registrant of the name. Wild West Domains, Inc. (R120-LROR) has verified that Respondent is bound by the Wild West Domains, Inc. (R120-LROR) 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.org. Also on January 17, 2012, 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.
A timely Response was received and determined to be complete on February 6, 2012.
Each party filed an additional submission and the Panel took them into consideration.
On February 15, 2012, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed
Diane Cabell, Terry F. Peppard and James A. Carmody (Chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <autoownersinsurance.org> domain name, the domain name at issue, is confusingly similar to Complainant’s AUTO-OWNERS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent
1. The Complainant does not have exclusive rights to the AUTO- OWNERS mark because it merely registered it as a design mark and has not proven that it is a common law trademark.
2. Respondent has rights and legitimate interests in the domain name at issue.
3. Respondent did not register and has not used the <autoownersinsurance.org> domain name in bad faith.
C. Additional Submissions
Each of the parties filed an Additional Submission. Therein, Complainant provided evidence of long use and secondary meaning of the AUTO-OWNERS mark and its registration. Respondent objected vehemently to the introduction of a claim and proof of a common law trademark solely through support in Complainant’s Additional Submission.
Complainant has registered the AUTO-OWNERS mark with the United States Patent and Trademark Office as No. 1,972,840 registered May 7, 1996 on the principal register with first use and use in commerce claimed to be December 31, 1966. It also has USPTO Registration No. 2,045,276, registered March 18, 1997 for AUTO-OWNERS AS design including letters in stylized form with first use claimed in 1916 and use in commerce in 1935. Complainant has continuously sold insurance products in the United States of America at least as early as 1996. Complainant has not licensed or otherwise authorized the Respondent to use this trademark and Respondent is not commonly known by the domain name at issue.
Respondent registered the domain name at issue on July 29, 2005 and apparently utilizes the associated website to provide information related to insurance on this and a number of other websites dealing with similar subject matter. Although Complainant is a United States of America company and Respondent is a New Zealand entity, it does not appear likely to the Panel that the Respondent could have been unaware, actually or constructively, of the trademark owned and used by Complainant at the time of registration of <autoownersinsurance.org> in 2005.
Complainant furnished evidence of common law trademark rights in the AUTO-OWNERS mark with use dating back to 1917. However the claim of common law rights and supporting evidence was only provided in Complainant’s Additional Submission. Respondent properly objected to the fact that this new claim and evidence was not included in the Complaint as it should have been. Accordingly, the Panel has decided this case without reference to the common law trademark issue.
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.
Complainant has registered the AUTO-OWNERS mark with the United States Patent and Trademark Office as No. 1,972,840, registered May 7,1996. Registration of a mark with a federal trademark authority, regardless of whether the respondent is located within the jurisdiction of the trademark authority, confers rights in the mark to the complainant. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, Complainant has rights in the AUTO-OWNERS mark under Policy ¶ 4(a)(i), given its registration of the mark with the USPTO.
The <autoownersinsurance.org> domain name is confusingly similar to the AUTO-OWNERS mark. The registered marks are design marks and therefore not identical to the domain. However the design is simply that of stylized text and does not incorporate any non-text graphic element. As such, the Panel finds the similarity sufficiently confusing. See Asset Loan Co. Pty Ltd v. Gregory Rogers, D2006-0300, WIPO, May 2, 2006) (disregarding the mark’s additional text and graphic logo in finding similarity where “the dominant thrust of the trademark is to convey to the reader the name Asset Loan Co and it is this concept that makes up the entirety of the domain name.”) Respondent made the following changes to Complainant’s mark in the disputed domain name: the addition of the generic top-level domain (“gTLD”) “.org,” the removal of the hyphen in Complainant’s mark, and the addition of the descriptive term “insurance.” Respondent’s addition of a gTLD is of no concern to a Policy ¶ 4(a)(i) analysis. 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 Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Also, the deletion of the hyphen in Complainant’s mark fails to differentiate the disputed domain name from the AUTO-OWNERS mark. See 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); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion). Similarly, the Panel finds that Respondent’s addition of a term which describes the services Complainant provides does not negate a finding of confusing similarity. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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”). Therefore, the Panel finds that the <autoownersinsurance.org> domain name is confusingly similar to Complainant’s AUTO-OWNERS mark under Policy ¶ 4(a)(i).
Complainant has satisfied Paragraph 4(a)(i) of the Policy.
Complainant must first make 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.”). In this case, Complainant has made such a showing and the burden has shifted to the Respondent.
Respondent is not commonly known by the disputed domain name. Respondent does not have any service marks which incorporate parts of the <autoownersinsurance.org> domain. In this regard, the WHOIS record shows that the domain name registrant is listed as “Alan Kelly / Noble Lowndes Corporation Limited” and that the <autoownersinsurance.org> domain name was registered on July 29, 2005. The WHOIS record, along with other available information, is often used to determine whether a respondent is commonly known by a disputed domain name. See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent makes no claim of noncommercial use under Policy ¶ 4(c)(iii).
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services. The <autoownersinsurance.org> domain name resolves to a website which displays information about a variety of insurance services, as well as numerous links whereby consumers in the U.S. can obtain quotes on auto insurance policies. The links lead to quote services offered by Complainant’s competitors in the insurance industry. Respondent, a long-standing insurance professional, asserts that it earns revenue from these referrals and is thus performing in the same manner as any terrestrial insurance agent in providing bona fide goods and services. Respondent did not, however, clarify whether that revenue was earned from links per se or from sales of insurance products, and provided no indication of actual revenues earned; hence the Panel is not persuaded that there are actual bona fide services being offered by Respondent.
The Panels in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), and TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), found that the display of links to competitors of the complainant was not a protected use of a domain name. Therefore, the Panel finds that Respondent’s use of the <autoownersinsurance.org> domain name to display competitive links is neither a Policy ¶¶ 4(c)(i) bona fide offering of goods or services nor 4(c)(iii) a legitimate noncommercial use.
Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
Respondent’s registration and use of the disputed domain name is an attempt to disrupt Complainant’s business efforts. The links generated by the web site require entering a U.S. zip code, implying that the site is dedicated to sales in the United States which is the jurisdiction where Complainant has been operating for many decades. The site does not appear to offer services within Respondent’s own territory of New Zealand nor any other, hence it appears to this Panel as if the Respondent’s very purpose was to inject himself particularly within Complainant’s territory. The display of competing links on a disputed domain name is disruptive to a complainant’s business. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent’s display of links to Complainant’s competitors is disruptive to Complainant’s business, thereby demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel also finds that the registration and use of the <autoownersinsurance.org> domain name was intended to cause confusion as to the source of the disputed domain name and to then take commercial advantage of Internet users’ mistakes made in connection with this confusion. Respondent presents himself as an established professional in the insurance field, thus the Panel is simply not persuaded that the domain was chosen for its descriptive qualities as much for its association with Complainant’s brand name. In short, this Panel is of the opinion that an insurance professional who registers the name of a long-standing vendor in the industry and commences immediately to establish a site that directs consumers to competitors of that vendor is simply not acting in good faith. This is classic cybersquatting. 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
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.org> domain name be TRANSFERRED from Respondent to Complainant.
Diane Cabell, Terry F. Peppard and
James A. Carmody (Chair), for the Panel
Dated: February 28, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page