Progressive Casualty Insurance Company v. Vazha Mamniashvili
Claim Number: FA1203001432387
Complainant is Progressive Casualty Insurance Company (“Complainant”), represented by Courtni E. Thorpe of Baker & Hostetler LLP, Ohio, USA. Respondent is Vazha Mamniashvili (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <progressiveinsurancecanada.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2012; the National Arbitration Forum received payment on March 1, 2012.
On March 2, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <progressiveinsurancecanada.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@progressiveinsurancecanada.com. Also on March 5, 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 April 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant makes the following submissions.
1.Complainant, Progressive Casualty Insurance Company, uses the PROGRESSIVE mark in connection with automobile insurance underwriting, adjusting and claims processes, insurance premium quoting, and providing insurance-related information through the Internet.
2.Complainant owns rights in the PROGRESSIVE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,844,695 registered July 12, 1994).
3.Complainant has used the PROGRESSIVE mark in its insurance business since 1937.
4.Respondent, Vazha Mamniashvili, registered the <progressiveinsurancecanada.com> domain name on February 26, 2011.
5.Respondent’s domain name resolves to a website that offers competing insurance services to Internet users.
6.Respondent does not have authorization to use the PROGRESSIVE mark.
7.Respondent had actual and constructive notice of Complainant’s rights in the PROGRESSIVE mark prior to registering the disputed domain name.
8.Respondent has a history of cybersquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in automobile insurance underwriting, adjusting and claims processes, insurance premium quoting, and providing insurance-related information through the Internet and has done so for many years.
2. Complainant owns rights in the PROGRESSIVE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,844,695 registered July 12, 1994).
3. Complainant has used the PROGRESSIVE mark in its insurance business since 1937.
4. Respondent registered the <progressiveinsurancecanada.com> domain name on February 26, 2011. It resolves to a website that offers competing insurance services to Internet users.
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.
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.”).
Complainant submits that it has rights in the PROGRESSIVE mark through its registration of the mark with the USPTO (Reg. No. 1,844,695 registered July 12, 1994). The Panel agrees with that submission and finds that Complainant has rights in the mark. The panel in Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), found that the complainant established rights in its mark by registering the mark with the USPTO. The panel in Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), held that registration of a mark with the USPTO secures a complainant’s rights in the mark. The Panel concludes that Complainant’s registration of the PROGRESSIVE mark with the USPTO establishes rights in the mark for the purposes of Policy ¶ 4(a) (i). The Panel also finds that Complainant need not register its PROGRESSIVE mark in the country where Respondent resides and operates under Policy ¶ 4(a) (i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant then submits that the <progressiveinsurancecanada.com> domain name is confusingly similar to its PROGRESSIVE mark and the Panel finds that it is. Complainant asserts that, by adding the descriptive word “insurance,” the geographic word “canada,” and the generic top-level domain (“gTLD”) “.com,” Respondent’s domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). The panel in Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), held that a domain name that contains the complainant’s mark and adds a descriptive term, which is an “obvious allusion to complainant’s business,” is confusingly similar to the mark. The panel in Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004), found that a domain name that consists of a well-known mark with a geographic term attached is confusingly similar to the mark. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel held that attaching the gTLD “.com” is not an adequate change to distinguish the disputed domain name from a mark. The Panel therefore finds the additions to the mark render the domain name confusingly similar to the PROGRESSIVE mark under Policy ¶ 4(a) (i).
Accordingly, Complainant has made out the first of the three elements that it must establish.
It is now well established that 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.”).
Having regard to those principles, the Panel finds that Complainant has made out its prima facie case. The prima facie case arises from the following considerations:
(a)Respondent has chosen for his domain name Complainant’s famous trademark and has added to it the descriptive word “insurance,” the geographic word “canada,” and the generic top-level domain (“gTLD”) “.com,” making the disputed domain name confusingly similar to Complainant’s PROGRESSIVE trademark;
(b) Respondent has then caused the domain name to resolve to a website that purports to contain information about Complainant, plainly for the purpose of deceiving internet users as to Complainant’s operation or endorsement of or affiliation with Respondent’s site; Respondent’s website links to a third party website offering competing services to those provided by Complainant;
(c) this use by Respondent of Complainant’s trademark and the use to which he has put the disputed domain name have taken place entirely without the authority or consent of Complainant;
(d)Complainant has submitted that Respondent is not commonly known by the <progressiveinsurancecanada.com> domain name and asserts that the WHOIS information identifies the domain registrant as “Valhi Mamniashvili,” which does not demonstrate that Respondent is commonly known by the domain name. In Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001), the panel held that, because of the fame associated with the complainant’s VICTORIA’S SECRET mark, respondent is unlikely to be commonly known by the <victoriasecretcasino.com> domain name. The panel in Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003), found that the complainant’s “ongoing and substantial use of its unique and famous” mark made it difficult for the respondent to show that it had rights or legitimate interests in the domain name. The Panel therefore concludes that, because of the WHOIS information and the fame connected with Complainant’s mark, Respondent is not commonly known by the <progressiveinsurancecanada.com> domain name and cannot claim rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
(e)Complainant also submits that Respondent’s use of the website to offer competing insurance services, as well as to display text containing allegedly misleading information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), held that the respondent’s use of a domain name to sell goods to consumers in competition with complainant’s service does not demonstrate a legitimate interest in the domain name. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel found that respondent redirected users to a website whose financial services competed with the complainant and was not a bona fide offering of goods or services. The Panel therefore finds that operating a website at a confusingly similar domain name in order to offer consumers services that compete with Respondent’s services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
These matters go to establish the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and is being used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a history of registering domain names with the intent of preventing the holder of the mark from registering the domain. Complainant submits evidence that a domain name was transferred from Respondent to the respective complainant in a prior UDRP case. See Gov’t Employees Health Ass’n v. Mamniashvili, Case No. D2010-0334 (WIPO April 16, 2010) (granting transfer of the domain name). Complainant asserts that Respondent also owns registrations for other domain names that include famous brands. See Exhibit 8. The Panel finds that Complainant’s pattern of registering domain names bearing others’ registered trademarks amounts to bad faith registration and use under Policy ¶ 4(b) (ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Secondly, Complainant submits that Respondent disrupts its business within the meaning of Policy ¶ 4(b) (iii) by offering competing services in the insurance industry to Internet users who arrive at the website and purchase insurance from a company other than Complainant. The Panel agrees and finds that Respondent’s use of the <progressiveinsurancecanada.com> domain name to offer competing services to website visitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iii).”); see also Jeri v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Thirdly, Complainant alleges that the disputed domain name was registered and is being used in bad faith within the meaning of Policy ¶ 4(b) (iv) because the domain name's confusing similarity deceives customers as to Complainant’s endorsement in the resolving website. Complainant asserts that the confusingly similar domain name brings business to Respondent’s competing business, which demonstrates bad faith. The panel in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), found that bad faith existed where the respondent’s domain name was confusingly similar to the complainant’s mark and the domain name resolved to a commercial website presenting services competing with those of the complainant. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel held that the respondent registered and used the domain names in bad faith because they were confusingly similar to the complainant’s mark, and diverted users to a competing website. The Panel therefore concludes that Respondent is engaged in bad faith registration and use of the <progressiveinsurancecanada.com> domain under Policy ¶ 4(b) (iv) because it capitalizes on the confusing similarity to Complainant’s PROGRESSIVE mark to sell its own services to website visitors.
Fourthly, Complainant alleges that Respondent had actual and constructive notice of Complainant's rights in the PROGRESSIVE mark prior to registration of the domain names because the <progressiveinsurancecanada.com> domain name combines the famous PROGRESSIVE mark with wording that associates the insurance services offered by Complainant with the mark. Constructive notice has generally been thought inadequate to support a finding of bad faith; however, the Panel concludes that Respondent should be inferred to have had actual notice of Complainant's mark because of its fame and that he thus registered the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
In addition, the Panel finds that the whole conduct of Respondent in registering the disputed domain name and in using it in the manner described amounts to bad faith registration and use within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <progressiveinsurancecanada.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: April 13, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page