Auto-Owners Insurance Company v. David Haan
Claim Number: FA1201001423584
Complainant is Auto-Owners Insurance Company (“Complainant”), represented by Ron Brittain, Michigan, USA. Respondent is David Haan (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autoowners-insurance.com>, registered with Go Daddy.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 9, 2012; the National Arbitration Forum received payment January 13, 2012.
On January 9, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <autoowners-insurance.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy verified that Respondent is bound by the Go Daddy 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 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@autoowners-insurance.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2012, 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.
On February 14, 2012, Complainant timely filed its Additional Submission pursuant to Supplemental Rule 7(a) asserting that it also has common law rights in its mark.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <autoowners-insurance.com> is confusingly similar to Complainant’s AUTO-OWNERS mark.
2. Respondent has no rights to or legitimate interests in the <autoowners-insurance.com> domain name.
3. Respondent registered and used the <autoowners-insurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Auto-Owners Insurance Company, is the owner of the AUTO-OWNERS mark. Complainant uses its mark in connection with insurance underwriting services. Complainant provided evidence of its registrations through the United States Patent and Trademark Office (“USPTO”) for the AUTO-OWNERS mark (e.g., Reg. No. 1,972,840 registered May 7, 1996).
Respondent, David Haan, registered the disputed domain name March 27, 2011. The <autoowners-insurance.com> domain name resolves to a website that displays general information on insurance as well as providing links to Complainant’s competitors in the insurance industry.
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 yo 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 urges that it has rights in the AUTO-OWNERS mark. Complainant provides the Panel with supporting evidence of its claim to ownership of trademark registrations for the AUTO-OWNERS mark (e.g., Reg. No. 1,972,840 registered May 7, 1996) with the USPTO. Registration of a trademark with a federal trademark authority is a sufficient ground for which to assert rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007. This Panel finds that Complainant established rights in the AUTO-OWNERS mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the disputed <autoowners-insurance.com> domain name is confusingly similar to its mark. Respondent deletes the hyphen in Complainant’s mark and adds a hyphen later in the disputed domain name. The Panel finds that the addition and omission of punctuation, like hyphens, fails to make a disputed domain name distinctive from the mark within it. 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 Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Respondent also adds the term “insurance” to Complainant’s mark in the disputed domain name, a term which describes the services that Complainant provides. The Panel finds that the addition of a descriptive term fails to differentiate a disputed domain name from the infringed-upon mark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Finally, Respondent adds the generic top-level domain (“gTLD”) “.com” to the <autoowners-insurance.com> domain name. The Panel finds that addition of a mandatory gTLD to a mark to create a domain name is irrelevant for a finding 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 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.”).
Although it was not necessary for Complainant to do so under the above finding,
Complainant also asserted that it has common law rights in its mark and
submitted more than sufficient documentary evidence to establish its history
and products such as would establish secondary meaning in the mark.
Therefore, the Panel finds that the <autoowners-insurance.com> domain name is confusingly similar to the AUTO-OWNERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant urges that Respondent has neither rights nor legitimate interests in the disputed domain name. Once a complainant makes a prima facie to support its allegations, the burden of proof shifts to the respondent to provide evidence to the contrary. 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 Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds that Complainant made a prima facie case to support its assertions. Respondent thus bears the burden of disproving the claims that Complainant made against it. Respondent, however, failed to submit a Response to the Complaint. Given this, the Panel will proceed making all reasonable inferences from the available information. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). As such, the Panel will review the record for any circumstances that may confer rights or legitimate interests on Respondent.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS record lists “David Haan” as the domain name registrant. The Panel finds that this does not reflect any part of the disputed domain name. Additionally, Complainant alleges that Respondent does not have a service mark that incorporates any part of the disputed domain name and is not in the insurance business, despite what the <autoowners-insurance.com> domain name may imply. Panels have previously held that the WHOIS record along with any other pertinent information available is illustrative of whether a respondent is commonly known by a disputed domain name. 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 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). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under a Policy ¶ 4(c)(ii) analysis.
Complainant contends that the <autoowners-insurance.com> domain name is not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <autoowners-insurance.com> domain name resolves to a website that displays general insurance information as well as links to Complainant’s competitors in the insurance industry. Panels have held that the use of a disputed domain name to display links to the complainant’s competitors is not a use that provides the respondent with rights or legitimate interests. 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 use of the <autoowners-insurance.com> domain name is not a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services and it is not a legitimate noncommercial or fair use.
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).
Complainant urges that Respondent’s registration and use of the <autoowners-insurance.com> domain name is disruptive. Complainant asserts that the <autoowners-insurance.com> domain name resolves to a page that provides links to competing insurance companies. Panels have found that the display of links to competitors of the complainant is disruptive. 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)). The Panel finds that Respondent changes the expected flow of Internet users from Complainant’s own website to Complainant’s competitors’ website by providing these competing links at a confusingly similar domain name. Thus, the Panel holds that Respondent’s registration and use of the <autoowners-insurance.com> domain name is disruptive to Complainant’s business and supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that the registration and use of the disputed domain name was done in order to allow Respondent to profit by creating confusion as to the source of the disputed domain name. Complainant argues that the confusingly similar <autoowners-insurance.com> domain name displaying content similar to that which Complainant provides will suggest to Internet users that Complainant is the source of the disputed domain name. As a result, rather than seeking out Complainant’s genuine website, the Internet users may click through the displayed links to Complainant’s competitors. The Panel is permitted in such circumstances to make an inference that Respondent is compensated for displaying these links and/or receives fees for the Internet users who click through the links. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in order to create confusion as to the source of the disputed domain name and in order to profit from Internet users resulting mistakes, and this also supports findings of bad faith registration and use under 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 finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <autoowners-insurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 22, 2012.
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