national arbitration forum

 

DECISION

 

Assurant, Inc. v. Milan Kovac

Claim Number: FA1209001463515

 

PARTIES

Complainant is Assurant, Inc. (“Complainant”), represented by Nadya Sand of Alston & Bird, LLP, Georgia, USA.  Respondent is Milan Kovac (“Respondent”), Slovakia

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <assurantemloyeebenefits.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com.

 

PANEL

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2012; the National Arbitration Forum received payment on September 20, 2012. The Complaint was submitted in both Slovak and English.

 

On September 21, 2012, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <assurantemloyeebenefits.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com and that Respondent is the current registrant of the name.  Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.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 27, 2012, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of October 17, 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@assurantemloyeebenefits.com.  Also on September 27, 2012, the Slovak language 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 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant’s Allegations

Complainant has operated its business since 1999 as an insurance provider and financial services provider using the ASSURANT mark. Complainant holds several trademark registrations around the world for its family of ASSURANT marks, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,543,367 registered February 26, 2002) and the Office For Harmonization in the Internal Market (“OHIM”) (Reg. No. 004379079 registered November 11, 2006). Complainant began using the ASSURANT EMPLOYEE BENEFITS mark in relation to certain insurance services, and it owns trademark registrations for the mark with the USPTO (e.g., Reg. No. 2,946,817 registered May 3, 2005). 

Respondent registered the <assurantemloyeebenefits.com> domain name on November 27, 2005, and uses the resolving website to offer visitors links for various insurance topics which take the user to third-party insurance websites, including to Complainant’s competitors. Respondent profits by rerouting Internet traffic to the third party website. Respondent has no affiliation with Complainant’s business nor does it have permission to use the ASSURANT mark in any form. Respondent has had eighteen previous UDRP complaints filed against it, all of which found that Respondent registered and used the domain names in bad faith. The <assurantemloyeebenefits.com> domain name is confusingly similar to Complainant’s ASSURANT EMPLOYEE BENEFITS mark. Respondent cannot claim rights or legitimate interests in the disputed domain name because it does not use the name in connection with bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered and uses the <assurantemloyeebenefits.com> domain name in bad faith because the domain name is confusingly similar to Complainant’s mark, and Respondent uses the domain to make a profit by attracting consumers to its hyperlinked website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS AND DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant asserts that it owns rights in the ASSURANT EMPLOYEE BENEFITS mark via its trademark registrations with the USPTO (e.g., Reg. No. 2,946,817 registered May 3, 2005). Complainant’s USPTO registrations establish Complainant’s rights in the ASSURANT EMPLOYEE BENEFITS mark under Policy ¶ 4(a)(i). Complainant is not required to register its ASSURANT EMPLOYEE BENEFITS mark in the country where Respondent resides and operates for the purposes of Policy ¶ 4(a)(i). See 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 contends that the <assurantemloyeebenefits.com> domain name is confusingly similar to its ASSURANT EMPLOYEE BENEFITS mark in that the domain name uses the entire mark, omitting only the letter “p” from the word “employee.” The Panel finds that the minor change made in the <assurantemloyeebenefits.com> domain name does not prevent the domain name from being confusingly similar to Complainant’s ASSURANT EMPLOYEE BENEFITS mark for the purposes of Policy ¶ 4(a)(i).

 

Thus, Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant states that Respondent has no connection or affiliation with Complainant that entitles Respondent to use the ASSURANT EMPLOYEE BENEFITS mark in any manner. The Panel observes that the WHOIS information identifies the registrant of the disputed domain name as “Milan Kovac.” The Panel finds that the registrant name does not indicate that Respondent is commonly known by the <assurantemloyeebenefits.com> domain name and determines that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name because Respondent hosts competing businesses’ hyperlinks at its resolving website in exchange for commercial profit. Complainant alleges that Respondent takes advantage of the fame connected with the ASSURANT EMPLOYEE BENEFITS mark in order to generate income. The Panel agrees and concludes that Respondent does not make 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) by offering website visitors hyperlinks to businesses whose services compete with those of Complainant.

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s bad faith registration and use are demonstrated by the eighteen previous UDRP decisions ordering that Respondent transfer its domain name to the mark holder. See, e.g., Assurant, Inc. v. Kovac, FA 1396648 (Nat. Arb. Forum Aug. 17, 2011); Lockheed Martin Corp. v. Kovac, FA 1384033 (Nat. Arb. Forum May 31, 2011). In TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009), the panel concluded that the previous decisions against respondent Kovac show a pattern of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii). This Panel also finds that Respondent’s previous adverse UDRP decisions are evidence of Respondent’s bad faith pattern of registration and use pursuant to Policy ¶ 4(b)(ii).

 

Respondent uses a confusingly similar domain name to attract consumers to its website, which offers visitors hyperlinks to businesses offering services that are similar to those offered by Complainant. Complainant asserts that Respondent’s “transparent goal” in registering the <assurantemloyeebenefits.com> domain name is to confuse consumers into the belief that Complainant and its mark are associated with Respondent’s website. The Panel concludes that Respondent registered and uses the <assurantemloyeebenefits.com> domain name in bad faith under Policy ¶ 4(b)(iv), as demonstrated by its use of the domain name to mislead Internet traffic to its website by confusing consumers and making a resulting profit.

Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <assurantemloyeebenefits.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David A. Einhorn, Panelist

Dated:  November 8, 2012

 

 

 

 

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