Assurant, Inc. v. ICS INC.
Claim Number: FA1208001460024
Complainant is Assurant, Inc. (“Complainant”), represented by Jason M. Sneed of Sneed PLLC, North Carolina, USA. Respondent is ICS INC. (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurant-health.net>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2012; the National Arbitration Forum received payment on August 27, 2012.
On August 29, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <assurant-health.net> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 September 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@assurant-health.net. Also on September 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 October 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Since at least as early as 1999, Assurant, its affiliates, predecessors, and related businesses have provided individuals and groups in the United States and elsewhere in the world with a wide array of insurance and business services under the mark ASSURANT and other marks that include the term ASSURANT.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT mark (Reg. No. 2,543,367 registered February 26, 2002), ASSURANT SOLUTIONS, U.S. Reg. No. 3,308,1 04 registered Oct. 9, 2007, and ASSURANT HEALTH, U.S. Reg. No. 2,974,177.
Complainant uses the ASSURANT mark in connection with health insurance and health service offerings.
Respondent registered the <assurant-health.net> domain name on December 6, 2011.
The <assurant-health.net> domain name is confusingly similar to Complainant’s ASSURANT mark.
Respondent is not known by the <assurant-health.net> domain name and is not permitted to use Complainant’s ASSURANT mark.
The WHOIS information identifies “ICS INC.” as the registrant of the <assurant-health.net> domain name.
Respondent does not make an active use of the disputed domain name, but instead uses the <assurant-health.net> domain name to resolve to a website that purports to offer affordable health insurance, medical insurance, and health plans, but clicking on one of the hyperlinks for these services results in a new webpage containing hyperlinks to Complainant’s competitors.
Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use.
Respondent had constructive and actual knowledge of Complainant’s rights in the ASSURANT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for the ASSURANT, ASSURANT SOLUTIONS and ASSURANT HEALTH trademarks.
Respondent registered the <assurant-health.net> domain name after Complainant acquired trademark rights in its ASSURANT related trademarks.
The WHOIS information identifies “ICS INC.” as the registrant of the <assurant-health.net> domain name.
The <assurant-health.net> domain name to resolve to a website that purports to offer affordable health insurance, medical insurance, and health plans. Clicking on one of the hyperlinks on such website results in a new webpage containing hyperlinks to Complainant’s competitors.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant submits its USPTO trademark registrations for the ASSURANT mark and ASSURANT HEALTH, among others and thereby demonstrates Complainant’s rights in such marks for the purpose of Policy ¶ 4(a)(i). 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The <assurant-health.net> domain name is confusingly similar to Complainant’s ASSURANT mark. The domain name combines Complainant’s ASSURANT mark with a hyphen, the descriptive term “health,” and appends the generic top-level domain.net.” Additionally, the domain name is identical to Complainant’s ASSURANT HEALTH trademark only differing by a hyphen and the appended top level domain name. Although the similarity of the at-issue domain name to any one of Complaint’s trademarks is sufficient to allow a Complainant to pursue transfer of a domain name under the Policy, these additions to Complainant’s marks do not sufficiently distinguish the disputed domain name from either mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “ICS INC.” as the registrant of the <assurant-health.net> domain name and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <assurant-health.net > domain name. The Panel therefore concludes that Respondent is not commonly known by the <franchisetimes.org> domain name for the purposes of 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).
Respondent uses the <assurant-health.net> domain name to resolve to a website that purports to offer affordable health insurance, medical insurance, and health plans. Clicking on one of the hyperlinks for these services results in a new webpage containing hyperlinks to Complainant’s competitors. Using the domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <assurant-health.net> domain name. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith.
Policy ¶ 4(b)(iv) allows a complainant to demonstrate bad faith registration and use by showing that a respondent attempts to commercially benefit by creating a likelihood of confusion as to the complainant’s affiliation with a disputed domain name. Here, the Panel infers that Respondent commercially benefits by receiving click-through fees from the hyperlinks found on the resolving website. The Panel also presumes that Respondent attempts to create confusion as to Complainant’s affiliation with the <assurant-health.net> domain name by including Complainant’s marks in the domain name and hosting competing hyperlinks that are relevant to Complainant’s business. Therefore, the Panel concludes that Respondent registered and uses the <assurant-health.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
As further evidence of Respondent’s bad faith registration and use, it is apparent that Respondent had actual knowledge of Complainant’s rights in one or more of the ASSURANT related marks at the time it registered the at-issue domain name. Registering a domain name with knowledge of another’s rights therein demonstrates that Respondent registered the <assurant-health.net> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <assurant-health.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 12, 2012
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