Assurant, Inc. v. Above.com Domain Privacy
Claim Number: FA1206001447095
Complainant is Assurant, Inc. (“Complainant”), represented by Nadya Munasifi Sand of Alston & Bird, LLP, Georgia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurantmakepaymentonline.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2012; the National Arbitration Forum received payment on June 4, 2012.
On June 5, 2012, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <assurantmakepaymentonline.com> domain name is registered with Above.com Pty Ltd and that Respondent is the current registrant of the name. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd 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 June 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@assurantmakepaymentonline.com. Also on June 6, 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 July 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following assertions:
1. Respondent’s <assurantmakepaymentonline.com> domain name is confusingly similar to Complainant’s ASSURANT mark.
2. Respondent does not have any rights or legitimate interests in the < assurantmakepaymentonline.com> domain name.
3. Respondent registered or used the <assurantmakepaymentonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant uses the ASSURANT mark to promote its financial and insurance services.
2. Complainant owns trademark registrations for its ASSURANT marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,543,367 registered February 26, 2002).
3. Complainant has operated since 1999 and has advertised and marketed its services under the ASSURANT mark in a variety of media, including the Internet.
4. Complainant owns the <assurant.com> domain name and uses it to promote its services to the public.
5. Complainant’s ASSURANT mark has fostered valuable goodwill and recognition, which has allowed Complainant to acquire common-law rights in the ASSURANT mark in the United States and many other countries, as well as the right to prevent others from using the mark or confusingly similar variations thereof.
6. Respondent registered the <assurantmakepaymentonline.com> domain name on October 26, 2011.
7. Respondent’s disputed domain name resolves to a “parked” webpage displaying third-party hyperlinks. The webpage is not approved by or associated with Complainant.
8. The disputed domain name is confusingly similar to Complainant’s ASSURANT mark.
9. Respondent has no rights or legitimate interests in the disputed domain name, as shown by the WHOIS information for the registrant, and by Respondent’s use of the resolving webpage, which generates referral fees from “click-through” links.
10. Respondent registered and uses the <assurantmakepaymentonline.com> domain name in bad faith because Respondent provides Internet consumers with links to third-party businesses.
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 claims to own trademark registrations for its ASSURANT mark through registrations with the USPTO (e.g., Reg. No. 2,543,367 registered February 26, 2002). The panels in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), both stated that holding a trademark registration with the USPTO suffices to establish rights in the mark. The Panel concludes that Complainant successfully demonstrates its rights in the ASSURANT mark pursuant to Policy ¶ 4(a)(i) by registering the mark with the USPTO. The Panel further determines that Policy ¶ 4(a)(i) does not mandate that Complainant register its mark in the country of Respondent’s residence. 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).
Complainant asserts that the <assurantmakepaymentonline.com> domain name is confusingly similar to the ASSURANT mark. Complainant alleges that the disputed domain name incorporates the entire mark, while adding the generic terms “make,” “payment,” and “online,” which Complainant argues does not properly distinguish the domain name from the mark and instead associates the domain with Complainant. The Panel also notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com. The Panel concludes that the using Complainant’s mark combined only with a generic phrase and a gTLD nonetheless renders the disputed domain name confusingly similar to the ASSURANT mark under Policy ¶ 4(a)(i). 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
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.”).
Complainant alleges that Respondent lacks rights or legitimate interests in the <assurantmakepaymentonline.com> domain name. The Panel notes that the WHOIS information associated with the disputed domain name identifies “Above.com Domain Privacy” as the registrant. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel stated that the respondent failed to provide evidence that it is commonly known by the disputed domain name, which supported a finding that the respondent did not have rights or legitimate interests in the disputed domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel concluded that the WHOIS information, as well as other evidence on record, demonstrated that the respondent was not commonly known by the disputed domain name. The Panel finds that the WHOIS information for the <assurantmakepaymentonline.com> domain name, as well as Respondent’s absence of Response, implies that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) and consequently lacks rights or legitimate interests therein.
Complainant alleges that the content displayed at the resolving website associated with the disputed domain name is evidence that Respondent lacks rights or legitimate interests. Complainant claims that the corresponding website is a parked page containing third-party hyperlinks from which Respondent receives “click-through” fees, and such use is not in connection with a bona fide offering of goods or services nor is it a legitimate noncommercial use. The Panel notes that the hyperlinks advertise insurance services in competition with Complainant’s business. See Exhibit 3. The Panel finds that displaying hyperlinks for commercial profit is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant contends that Respondent’s use of the <assurantmakepaymentonline.com> domain name is evidence that Respondent registered and uses the domain name in bad faith. Complainant claims that Respondent uses the disputed domain name to divert Internet traffic to a website that displays hyperlinks for third-party businesses. The Panel notes that the hyperlinks are sponsored by insurance companies and that Complainant itself offers insurance services. Complainant contends in its Policy ¶ 4(a)(ii) section that the hyperlinks generate revenue for Respondent when Internet users visit the corresponding businesses. The Panel determines that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent attracts Internet consumers to its webpage using a confusingly similar domain name, and earns a profit as a result of visitor confusion regarding Complainant’s affiliation with the resolving webpage. 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 Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <assurantmakepaymentonline.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 16, 2012
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