Assurant, Inc. v. ICS INC.
Claim Number: FA1208001458722
Complainant is Assurant, Inc. (“Complainant”), represented by Nadya Sand of Alston & Bird, LLP, Georgia, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmyassurantpolicy.com>, registered with Tucows, 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 August 17, 2012; the National Arbitration Forum received payment on August 17, 2012.
On August 20, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwmyassurantpolicy.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 August 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@wwwmyassurantpolicy.com. Also on August 23, 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 September 18, 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
a) Complainant has rights in the ASSURANT mark. The mark is used in connection with financial and insurance mark. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) trademark registration for the ASSURANT mark (Reg. No. 2,543,367 registered February 26, 2002).
b) The <wwwmyassurantpolicy.com> domain name is confusingly similar to the ASSURANT mark.
c) Respondent has neither rights nor legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. The <wwwmyassurantpolicy.com> domain name resolves to a website where Respondent displays links to third-party websites, including websites belonging to Complainant’s competitors.
d) Respondent registered and is using the <wwwmyassurantpolicy.com> domain name in bad faith. More than ten UDRP complaints have been filed against Respondent and resulted in the transfer of the domain name at issue to the respective complainant. Respondent has attempted to lure Internet users to its website for financial gain by registering and using a confusingly similar domain name and displaying related content.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ASSURANT mark. Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wwwmyassurantpolicy.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 asserts that it has rights in ASSURANT mark used in connection with financial and insurance services. Complainant provides the Panel with evidence of its ownership of a USPTO trademark registration for the ASSURANT mark (Reg. No. 2543,367 registered February 26, 2002). The registration of a mark with a national trademark authority, regardless of the location of the parties, is evidence of having rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”);see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the ASSURANT mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wwwmyassurantpolicy.com> domain name is confusingly similar to the ASSURANT mark. In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel held that the addition of generic or descriptive terms fails to distinguish the disputed domain name from the mark within it. Similarly, the panel in Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003), found that the addition of the generic prefix “www” to a mark does not remove a disputed domain name from the realm of confusing similarity. Finally, in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel determined that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel finds that Respondent’s addition of the generic prefix “www,” the generic term “my,” the descriptive term “policy,” and the gTLD “.com” do not differentiate the <wwwmyassurantpolicy.com> domain name from the ASSURANT mark. Thus, the Panel finds that the <wwwmyassurantpolicy.com> domain name is confusingly similar to the ASSURANT mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. 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 argues that Respondent is not commonly known by the <wwwmyassurantpolicy.com> domain name. According to Complainant, Respondent has no association or affiliation with Complainant and is not licensed or permitted to use the ASSURANT mark in any form, including in a domain name. The WHOIS information identifies “ICS INC.” as the registrant of the disputed domain name. Complainant argues that the WHOIS information gives no indication that Respondent is known by the domain name at issue. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that a respondent could not establish rights and legitimate interests in a domain name where the respondent was not authorized to register a domain name featuring complainant’s mark and did not submit evidence that it was known by the domain name. The Panel agrees and finds that that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s lack of rights and legitimate interests is further illustrated where the <wwwmyassurantpolicy.com> domain name resolves to a website where Respondent displays links to third-party websites, including websites belonging to Complainant’s competitors. The Panel notes that such links are presented with headings, such as “Insurance Companies,” “Progressive Insurance,” “Hospital Insurance,” “Assurant,” “Accident Life Insurance,” and many others. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel found that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where the resolving website featuring third-party links to competing travel products and services. Similarly, the Panel here finds that Respondent’s use of the disputed domain name as described above does not amount to 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has been involved in more than ten UDRP proceedings that have resulted in the respective panels ordering the transfer of the domain name at issue to the respective complainant. E.g., Assurant, Inc. v. ICS INC., FA 1447091 (Nat. Arb. Forum July 17, 2012); ER Marks, Inc., FA 1431846 (Nat. Arb. Forum Apr. 17, 2012); Mediacom Commc’ns Corp. v. ICS INC., FA 1436208 (Nat. Arb. Forum Apr. 24, 2012). Complainant argues that such prior UDRP proceedings evidences bad faith registration and use on the part of Respondent in the current instance. The Panel agrees and finds accordingly under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
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 <wwwmyassurantpolicy.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 28, 2012
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