Assurant, Inc. v. Edie Gunter
Claim Number: FA1204001437665
Complainant is Assurant, Inc. (“Complainant”), represented by Nadya Munasifi Sand of Alston & Bird, LLP, Georgia, USA. Respondent is Edie Gunter (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-assuranthealth.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 2, 2012.
On April 3, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <www-assuranthealth.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@www-assuranthealth.com. Also on April 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 May 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 assertions:
1) Complainant owns rights in the ASSURANT HEALTH mark through its registration with the United States Patent and Trademark Office (“USPTO) (Reg. No. 2,974,177 registered July 19, 2005).
2) Complainant has provided individual and group insurance, as well as financial and other services under its ASSURANT family of marks since 1999.
3) Respondent registered the <www-assuranthealth.com> domain name on August 18, 2008.
4) Respondent’s domain name corresponds to a blog website that contains comments about insurance companies, as well as advertisements and hyperlinks to businesses in competition with Complainant.
5) Respondent’s domain name is confusingly similar to Complainant’s ASSURANT HEALTH mark.
6) Respondent has no permission to use the ASSURANT family of marks in any way and is not affiliated with Complainant’s business.
7) Respondent intentionally registered the domain name with the purpose of luring consumers to its website for commercial gain.
8) Respondent had “full knowledge” of Complainant and its rights in the ASSURANT HEALTH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds registered trademarks for the ASSURANT HEALTH mark with the United States Patent and Trademark Office. Respondent did not submit a Response in this proceeding.
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.”).
Registration of a mark with a national agency such as the USPTO establishes one’s rights in the mark in satisfaction of Policy ¶ 4(a)(i). The panels in Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), and Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), both held that a complainant sufficiently secures rights in its mark through registration of that mark with the USPTO. Complainant submits evidence that it registered the ASSURANT HEALTH mark with the USPTO (Reg. No. 2,974,177 registered July 19, 2005), which is asserts is sufficient to demonstrate its rights in the mark. The Panel concludes that Complainant owns rights in the ASSURANT HEALTH mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO.
Complainant asserts that the <www-assuranthealth.com> domain name is identical and/or confusingly similar to its ASSURANT HEALTH mark and points out that the prefix “www-,” as well as the generic top-level domain (“gTLD”) “.com,” are only minor alterations of the required elements of a domain name and do not differentiate the domain name from the mark. In Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005), the panel determined that adding a “www” prefix, a hyphen, and the gTLD “.com” does not change a domain name’s confusing similarity to a mark. The panel in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), held that eliminating spaces between words and adding a gTLD does not provide sufficient particularity from a mark under Policy ¶ 4(a)(i). The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) despite the changes made within the domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known by the <www-assuranthealth.com> domain name. Complainant argues that Respondent does not have any connection with Complainant or its business and is not licensed to use its ASSURANT HEALTH mark in any way. Complainant submits evidence that the WHOIS information identifies the registrant as “Edie Gunter.” The Panel finds that the WHOIS information, as well as Respondent’s lack of contrary evidence in the record, fail to support a finding that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant asserts that Respondent does not make a bona fide offering of goods or services and fails to make a legitimate noncommercial or fair use of the <www-assuranthealth.com> domain name. Complainant supports the allegation with screen shots of the resolving website, which display hyperlinks to competing businesses that also deal in the health insurance industry. Complainant asserts that Respondent makes a commercial profit in exchange for hosting the hyperlinks at its web page. The Panel finds that Respondent’s use of the corresponding web page to offer links to competing businesses does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent purposely created the confusingly similar domain name to lure Internet traffic to its website, in order to make a profit by selling third-party advertisements. Complainant asserts that Respondent intended to mislead consumers by creating a false association with Complainant’s business. In G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002), the panel concluded that the respondent used the domain name in order to attract Internet traffic to its site by using a confusingly similar domain name and that the respondent benefitted commercially from the confusion. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel stated that the respondent used the domain name to maintain a website that held links to competing websites from which the respondent presumably collected referral fees and found that such registration and use was in bad faith. Based upon the record, the Panel holds that Respondent registered and uses the <www-assuranthealth.com> domain name expressly for the purpose of confusing Complainant’s potential consumers and attracting them to its own website in order to make a profit, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant claims that Respondent had “full knowledge” of Complainant’s rights in the ASSURANT HEALTH mark, which Complainant contends are evidenced by the blog entries contained on the resolving website, which discuss Complainant’s business. Due to the hyperlinks of competing businesses advertising similar services to Complainant’s and the existence of blog entries concerning Complainant at the corresponding website, the Panel concludes that Respondent had actual knowledge of Complainant’s rights to the mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds Complainant has satisfied 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 <www-assuranthealth.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 7, 2012
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