Insubuy, Inc. v. Genetic Researches Community
Claim Number: FA1209001464188
Complainant is Insubuy, Inc. (“Complainant”), represented by Fritz L. Schweitzer of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Genetic Researches Community (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insurebuys.com>, registered with Register.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2012; the National Arbitration Forum received payment on September 25, 2012.
On September 26, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <insurebuys.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@insurebuys.com. Also on September 26, 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 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant Insubuy, Inc. ("Insubuy") is a well-respected and award-winning online insurance agent and broker located in Plano Texas. Complainant has been providing its services in interstate commerce under the mark INSUBUY® since at least April 16, 2002.
Complainant is the owner of the following United States service mark registrations and applications:
U.S. Registration No. 3,339,155 (INSUBUY) for "insurance agency, insurance brokerage and insurance plan administration in the field of medical, life, disability, personal
accident and travel health insurance."; first use: April 16, 2002; application filing date: April 10, 2007; registration date: November 20, 2007.
U.S. Registration No. 4,123,832 (INSUBUY) for "insurance agency, insurance brokerage and insurance plan administration in the field of medical, life, disability, personal accident, travel, flight, medical evacuation and visitors insurance."; first use: April 16,
2002; application filing date: June 5, 2010; registration date: April 10, 2012.
Incontestable U.S. Registration no. 2,932,871 (INSU BUY & Design) for "insurance agencies; and insurance services, namely, providing insurance quotes and policies in the fields of health, travel and life insurance via the Internet."; first use: April 16, 2002; application filing date: September 21, 2003; registration date: December 21, 2004.
U.S. Application Serial No. 85/569,129 (INSUBUY) for "insurance agency, insurance brokerage and insurance plan administration in the field of medical, life, disability, personal accident, travel, flight, medical evacuation and visitors insurance."; first use: April 16, 2002; application filing date: March 14, 2012.
Complainant is the owner of all rights to the above registrations and application, directly or by assignment. Registration No. 2,932,871 was initially registered in the name of Ace Objects, Inc. which assigned its rights to Insubuy, Inc.
In addition, Complainant is also the owner of pending trademark applications or issued registrations for the mark INSUBUY in various countries and regions throughout the world, including Australia, Brazil, Canada, China, Europe Union, India and Norway.
Complainant registered the domain insubuy.com on November 28, 2002, and continuously since that date Complainant has operated a commercial website at www. insubuy.com to promote and offer its services under the INSUBUY mark. In addition, Complainant is also the owner of many other domains incorporating or similar to the INSUBUY mark, including insubuy.net, insu-buy.us, insu-buy.net, insu-buy.org, insu-buy.biz, insu-buy.info, insubuy.us, insubuy.biz, insubuy.info, insu-by.com, insu-bye.com, insuby.com and insubye.com, and other domains.
Complainant has extensively employed, advertised and publicized the INSUBUY mark to provide and promote its services domestically and internationally. Due to substantial and exclusive use of the INSUBUY marks, Complainant has acquired common law rights in the mark and has become well-known in the United States and abroad in the field of travel medical and health insurance. Therefore the INSUBUY mark is entitled to substantial protection in the specified and related fields.
FACTUAL AND LEGAL GROUNDS
Hereinafter, Complainant's aforementioned service marks, as well as the common law rights and the rights conferred by the Federal registrations and applications related thereto, will be referred to collectively as the INSUBUY mark.
Complainant has been in business for more than ten (10) years, since at least 2002. Continuously during that period, Complainant has been providing insurance agency and brokerage services in interstate commerce in the United States under the INSUBUY mark to individuals and groups visiting the United States or traveling abroad who require what is commonly called visitor's insurance or travel insurance, which includes temporary health and medical insurance. Additionally, Complainant provides insurance to persons that require trip insurance to protect against losses related to changed or cancelled travel plans. Complainant provides its services primarily over the Internet, through its website at www.insubuv.com, and other domains.
Through extensive use and promotion of the INSUBUY mark throughout the United States, Complainant Insubuy has acquired substantial consumer and industry recognition, goodwill and common-law service mark rights throughout the United States. Complainant is the owner of the aforementioned U.S. Service Mark Registration Nos. 2,932,871, 3,339,155, and 4,123,832, which assert first use of the INSUBUY mark as of April 16, 2002.
Respondent registered the disputed domain name INSUREBUYS.COM on or about June 14, 2012, nearly a decade after the Complainant first began use of the INSUBUY mark and obtained the domain insubuy.com, and well after the Complainant obtained its U.S. Service Mark Registration Nos. 2,932,871, 3,339,155, and 4,123,832, on December 21, 2004, November 20, 2007, and April 10, 2012, respectively.
To date, Respondent has used the domain name INSUREBUYS.COM to connect to a holding page containing filler text relating to an unrelated, popular current news event. This filler text serves no purpose other than to potentially increase the search relevance of the page for purposes of reselling the domain or otherwise improperly appropriating Complainant's distinctive INSUBUY mark.
Respondent has registered and used, without authorization, the domain name INSUREBUYS.COM to divert Internet users to its website through the use of a domain name which is confusingly similar to Complainant's INSUBUY mark.
Complainant has attempted to resolve this matter by notifying Respondent of Complainant's service mark rights. On July 6, 2012, Complainant, through its attorneys, sent a letter to Respondent informing Respondent of Complainant's prior rights and requesting a transfer of the domain. On August 9, 2012, Complainant, through its attorneys, sent a reminder e-mail attaching the letter of July 6, 2012 to Respondent. Respondent has not responded or complied with either request. Therefore, Complainant was required to file the present Complaint.
Complainant respectfully requests that the following factual and legal grounds be considered and the disputed domain name be transferred to Complainant, Insubuy.
[a.] The domain INSUREBUYS.COM is confusingly similar to the Complainant's mark INSUBUY. ICANN Rule 3(b)(ix)(l); ICANN Policy ¶4(a)(i).
As set forth above, Complainant has established its rights to the INSUBUY mark, inter alia, by registering the mark with the United States Patent and Trademark Office ("USPTO"). 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum, April 17, 2006) (finding that Microsoft has established rights in the MICROSOFT mark through registration of the mark with the USPTO). The Complainant has also established its rights through extensive worldwide promotion of its brand for over a decade.
The disputed domain name INSUREBUYS.COM is confusingly similar to Complainant's INSUBUY mark in that it incorporates all elements of Complainant's INSUBUY mark, and merely injects superfluous elements.
Firstly, it is well-settled that the use of a generic top level domain (gTLD) is irrelevant to UDRP ¶4(a)(i) analysis. Therefore, the presence of the gTLD ".com" in the disputed domain does not serve to distinguish the domain from Complainant's mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be ".com," ".net," ".biz," or ".org," is irrelevant to a(a)(i) analysis).
Disregarding the gTLD ".com", it is proper to compare the second-level portion of the disputed domain (i.e., the portion preceding ".com") to Complainant's asserted trademark. Thus, in the present case, the proper comparison is between and Complaint's mark INSUBUY® and the string "INSUREBUYS."
Complainant's Asserted Mark INSUBUY
Relevant Portion of Disputed Domain INSUREBUYS
From this perspective, it is readily apparent that the disputed domain is nearly identical and confusingly similar - to the INSUBUY Mark. The only differences between Complainant's INSUBUY mark and the second-level portion in Respondents domain name (INSUREBUYS) are the addition of the letters "RE" in the middle, and the letter "S" at the end. Neither of these minor alterations distinguish the disputed domain from the INSUBUY Mark.
The presence of the letter "S" at the end of the second-level portion, INSUREBUYS, in Respondents domain name merely imitates the INSUBUY mark in a plural form. It is well settled that domain names which merely modify a mark from singular to plural (or vice versa) are not distinguishable from, and are deemed confusingly similar to, the mark. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter "s" and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant's BARNESANDNOBLE.COM mark pursuant to Policy ,-r 4(a)(i)).)
Likewise the use of the word "INSURE" in Respondent's domain does not distinguish the disputed domain from the INSUBUY mark because, when properly considered as a whole, the relevant portion of the disputed domain, namely the second-level portion INSUREBUYS, has the same overall sound and appearance as the INSUBUY mark and thus creates the same overall commercial impression as Complainant's mark. See, e.g., IPH International Pty Ltd. v Jjfamily Trust I James Mcilmurray FA1207001454799 (Nat. Arb. Forum September 6, 2012) (finding that the domain name "crimesafe.net" was confusingly similar to Complainant's trademark "CRIMSAFE"); See also e.g. LEGO Juris AIS v. Wyntergreen.ca D2010-2101 (WIPO February 1, 2011)("The disputed domain name <legoiland.com> is confusingly similar to the LEGOLAND trademark in which the Complainant has rights. The incorporation of the single letter "i" between the terms "lego" and "land" does not sufficiently change the overall commercial impression of the domain name to mitigate confusion. The domain name <legoiland.com> is visually similar to Complainant's LEGOLAND trademark; prior decisions have held that similar misspellings of domain names were confusingly similar to the trademarks at issue.") See, also e.g., Microsoft Corporation v. Charlie Brown, D2001-0362 (WIPO August 16, 2001) (holding that the additional letter "o" in <microosoft.com> did not result in a domain
name which was sufficiently different from Complainant's MICROSOFT trademark).
Accordingly, the INSUREBUYS.COM domain is identical and/or confusingly similar to Complainant's registered trademark INSUBUY.
[b.] The Respondent has no rights or legitimate interests in respect of the domain INSUREBUYS.COM
Respondent has no rights or legitimate interests in INSUREBUYS.COM. Respondent is not authorized by Complainant to use Complainant's INSUBUY mark in its domain name or otherwise. Respondent is not commonly known by, nor does it conduct business as, the domain name or any term incorporated therein. In fact, Registrant indicates that its name is Genetic Researches Community. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where respondent was not commonly known by the mark and never sought a license or permission from complainant to use the trademarked name).
Furthermore, Respondent has purposefully directed the disputed domain name to a passive holding page containing filler text relating to an unrelated, popular current news event, in an attempt to attract Internet traffic Respondent has not actively used the disputed domain name and has presented no explanation for that non-use. See Nike, Inc. v. Crystal Int'l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the disputed domain names).
Accordingly, Respondent has no legitimate rights or interests in INSUREBUYS.COM, nor has it used the domain name in any bona fide manner or made any legitimate fair use of the same.
[c.] The Respondent registered and is using the domain INSUREBUYS.COM in bad faith.
Respondent's use and registration of the INSUREBUYS.COM domain name satisfies the bad faith element set forth in Policy ¶4(b)(iv) for the following reasons:
1. Respondent had Actual and Constructive Notice of Complainant's Marks
Respondent's actual and/or constructive notice of Complainant's rights in the INSUBUY mark is evidence of bad faith registration and use ofiNSUREBUYS.COM.
In this regard, it is well established that ownership of a United States trademark registration confers upon its owner a right of priority to the mark as of the application filing date - in this case, as early as September 21, 2003. 15 U.S.C. § 1057. Moreover, the registration confers constructive knowledge on anyone attempting to use a federally registered or applied-for mark. 15 U.S.C. § 1072. Because Complainant's registration for INSUBUY was allowed by the U.S. Patent and Trademark Office well before Respondent's registration date in June 2012 for the disputed domain name, 'Respondent is charged with constructive notice of the prior rights of Complainant.' See Orange Glo Int'l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) ("Complainant's OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.")
In addition to constructive notice of Complainant's rights, Respondent's registration of the disputed domain name, incorporating Complainant's distinctive mark, strongly suggests that Respondent had actual notice of Complainant's rights in the INSUBUY mark and intended to trade on the goodwill owing to Complainant's distinctive indicators, further evidencing bad faith registration ofiNSUREBUYS.COM.
2. Passive Use of Domain Names is in Bad Faith
As discussed above, Respondent is passively using the disputed domain name. Respondent purposefully directed the INSUREBUYS.COM domain to a holding page containing filler text relating to an unrelated, popular current news event This filler text serves no purpose other than to potentially increase the search relevance of the page for purposes of increasing the value of the domain for resale or otherwise improperly appropriating Complainant's distinctive indicator INSUBUY.
Previous panels have found that passive use of a disputed domain is sufficient evidence to prove that the registrant's use is in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to made an active use of a domain name permits an inference of registration and use in bad faith.)
The objective consequence and effect of the Respondent's registration of the domain name INSUREBUYS.COM is to free ride on the Complainant's goodwill. Actual commercial gain is not necessary for finding use in bad faith. In State Farm, the panel noted that "there is no necessity for an actual commercial gain- the intention to so gain is enough."(finding passive use of a domain with a <godaddy.com> landing page in bad faith). State Farm Mutual Automobile Insurance Company v. Richard Pompilio, FA 0710001092410 (Nat. Arb. Forum, Nov. 20, 2007). An objective standard is used when considering a registrant's "intention to gain." See State Farm. ("The proper test ... is whether the objective consequence or effect of the Respondent's conduct is to free ride on the Complainant's goodwill, whether or not that was the primary (subjective) intent of the Respondent." State Farm Mutual Automobile Insurance Company v. Richard Pompilio, FA 0710001092410 (Nat. Arb. Forum, Nov. 20, 2007)(quoting Paule Ka v. Paula Korenek, D2003-0453 (WIPO July 24, 2003)).
Respondent's activities constitute trademark infringement, and are in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); the Federal Trade Commission Regulation of Deceptive Acts or Practices which encompasses those promotional activities that have the capacity to deceive consumers; and the Uniform Deceptive Trade Practices Act which prohibits likelihood of confusion or misunderstanding as to the source, sponsorship, approval or certification of goods or services.
Respondent has registered and used, without authorization, the domain name INSUREBUYS.COM to divert, Internet users to its website through the use of a domain name which is confusingly similar to Complainant's INSUBUY mark.
Accordingly, Respondent registered and is using the domain INSUREBUYS.COM in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 is a well-respected and award-winning online insurance agent and broker located in Plano, Texas. Complainant has been providing its services in interstate commerce under the INSUBUY mark since at least April 16, 2002. Complainant is the owner of several trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the INSUBUY (Reg. No. 3,339,155 registered Nov. 20, 2007) and INSU BUY and Design marks (Reg. No. 2,932,871 registered Mar. 15, 2005). The Panel finds Complainant has established its rights in the INSUBUY mark under Policy ¶4(a)(i) through its trademark registrations with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant claims Respondent’s <insurebuys.com> domain name is confusingly similar to Complainant’s INSUBUY mark, as the gTLD “.com” is irrelevant, and the disputed domain name simply adds the letters “r,” “e,” and “s” to Complainant’s mark. The Panel concurs and finds Respondent’s disputed domain name is confusingly similar to the INSUBUY mark under Policy ¶4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not authorized by Complainant to use the INSUBUY mark and is not commonly known by the disputed domain name or any term therein. The Panel determines the WHOIS information for the disputed domain name identifies “Genetic Researches Community” as the registrant of the domain name. Respondent has not come forward with any evidence or arguments showing Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant’s contends Respondent is not making an active use of the disputed domain name and therefore Respondent is not making 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). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established). Respondent has done nothing to dispute this contention. Therefore, the Panel accepts this contention (although the Panel recognizes it is a fairly weak argument).
Although Complainant at one point contends Respondent’s activities have violated Policy ¶4(b)(iv), it has advanced no other arguments or evidence to sustain such an argument. Complainant has not claimed Respondent did this for commercial gain, so a critical element is missing. Policy ¶4(b) provides:
(i) circumstances indicating that [Respondent] … registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent] … registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] … engaged in a pattern of such conduct; or
(iii) [Respondent] … registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent] … intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.
Complainant has not established any of these elements to the Panel’s satisfaction.
However, the Panel it is not restricted to the bad faith instances suggested under Policy ¶4(b), but it may make its determination under Policy ¶4(a)(iii), by looking at the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant argues that Respondent is merely passively holding the disputed domain name, despite the presence of content on the apparently static resolving website. The Panel notes there is no resolving web site now, which strengthens Complainant’s argument Respondent is merely holding the domain name passively. Respondent does not disagree with Complainant. On this admittedly thin evidence, the Panel finds Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”).
Further, Complainant argues Respondent had both actual and constructive knowledge of Complainant’s rights in the INSUBUY marks, and meaning Respondent has exhibited bad faith registration and use. Complainant appears to rely on its trademark registrations for both actual and constructive knowledge and does not explain how Respondent has actual knowledge (except possibly for a July 6, 2012 demand letter, which might indicate bad faith use, but not bad faith registration). Constructive knowledge is generally regarded as insufficient to support a finding of bad faith.
Having barely established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <insurebuys.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 06, 2012
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