Esurance Insurance Services, Inc. v. Robert Miller / Health Benefit Solutions, Inc. / Health Benefit Solutions
Claim Number: FA1210001467793
Complainant is Esurance Insurance Services, Inc. (“Complainant”), represented by Charles S. Lee, California, USA. Respondent is Robert Miller / Health Benefit Solutions, Inc. / Health Benefit Solutions (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, and <esuranceman.mobi>, registered with TUCOWS.COM CO., and <esuranceagency.biz>, <esuranceagency.net>, and <esuranceagency.org>, registered with FAST DOMAIN INC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2012; the National Arbitration Forum received payment on October 17, 2012.
On October 18, 2012, TUCOWS.COM CO., confirmed by e-mail to the National Arbitration Forum that the <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, and <esuranceman.mobi> domain names are registered with TUCOWS.COM CO., and that Respondent is the current registrant of the names. TUCOWS.COM CO., has verified that Respondent is bound by the TUCOWS.COM CO., 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 October 19, 2012, FAST DOMAIN INC. confirmed by e-mail to the National Arbitration Forum that the <esuranceagency.biz>, <esuranceagency.net>, and <esuranceagency.org> domain names are registered with FAST DOMAIN INC. and that Respondent is the current registrant of the names. FAST DOMAIN INC. has verified that Respondent is bound by the FAST DOMAIN 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 October 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@einsuranceagent.biz, postmaster@einsurancebiz.biz, postmaster@esuranceadviser.com, postmaster@esuranceagency.biz, postmaster@esuranceagency.net, postmaster@esuranceagency.org, postmaster@esuranceagent.com, postmaster@esuranceman.biz, postmaster@esuranceman.com, and postmaster@esuranceman.mobi. Also on October 24, 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 November 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagency.biz>, <esuranceagency.net>, <esuranceagency.org>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, <esuranceman.mobi> domain names are confusingly similar to Complainant’s ESURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagency.biz>, <esuranceagency.net>, <esuranceagency.org>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, <esuranceman.mobi> domain names.
3. Respondent registered and used the <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagency.biz>, <esuranceagency.net>, <esuranceagency.org>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, <esuranceman.mobi> domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for the ESURANCE mark (e.g., Reg. No. 2,708,357 registered Apr. 22, 2003).
Respondent registered the <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagency.biz>, <esuranceagency.net>, <esuranceagency.org>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, <esuranceman.mobi> domain names between April 5, 2007 and July 26, 2012. Respondent is using the <esuranceman.com> domain name to offer insurance-related services, and passively holds the other 9 domain names in this dispute.
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.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the disputed domain names are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is one entity operating its business under the name Health Benefit Solutions, Inc. The Panel notes that the registrant information for the <esuranceman.com> domain name identifies “Health Benefit Solutions, Inc.” of 256 Eagleview Blvd, #218, Exton, PA 19341, as the registrant. The administrative contact for this domain name is “Miller, R.W.” with an e-mail address of <painsure@yahoo.com>. The <esuranceagency.biz>, <esuranceagency.net>, and <esuranceagency.org> domain names feature the same mailing and e-mail addresses as the <esuranceman.com> domain name, with the registrant being identified as “Health Benefit Solutions / Robert Miller.” The remaining <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagent.com>, <esuranceman.biz>, and <esuranceman.mobi> domain names are registered to “Health Benefit Solutions, Inc.” as the organization and “Robert Miller” as the registrant name or administrative contact, with a mailing address of 64 East Uwchlan Ave 464, Exton, PA 19341, and an e-mail address of <painsure@yahoo.com>.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and will proceed with Respondents referred to in the singular, Respondent.
The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient for Complainant to establish rights in the ESURANCE mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagency.biz>, <esuranceagency.net>, <esuranceagency.org>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, <esuranceman.mobi> domain names contain the ESURANCE mark in addition to the generic and/or descriptive terms “adviser,” “agency,” agent,” and “man.” The <einsuranceagent.biz> and <einsurancebiz.biz> domain names also contain the letters “i” and “n,” as well as the generic abbreviation “biz” for “business” in the <einsurancebiz.biz> domain name. Further, each disputed domain name also contains the generic top-level domain (“gTLD”) “.biz,” “.com,” “.org,” or “.mobi.” The Panel finds that the addition of letters and generic and/or descriptive terms to Complainant’s mark does not render the domain names distinct from the ESURANCE mark under Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); 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)). Further, the Panel finds that adding a gTLD to a mark is not relevant to a Policy ¶ 4(a)(i) analysis, as a gTLD is a required element of all domain names. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s disputed domain names are all confusingly similar to Complainant’s ESURANCE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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 contends that Respondent is not commonly known by the disputed domain names and Complainant has never authorized or licensed Respondent to use Complainant’s ESURANCE mark nor appointed Respondent to be one of Complainant’s agents. The WHOIS information for the disputed domain names identifies “Robert Miller / Health Benefit Solutions, Inc. / Health Benefit Solutions” as the registrant, which are not similar to the <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagency.biz>, <esuranceagency.net>, <esuranceagency.org>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, <esuranceman.mobi> domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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).
Further, Complainant argues that Respondent is not using the <esuranceman.com> domain name for 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), as Respondent offers insurance-related services through the <esuranceman.com> domain name. The Panel finds that offering insurance services in competition with Complainant’s is not 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 Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
The screenshots provided of the <esuranceadviser.com>, <esuranceagent.com>, and <esuranceman.mobi> domain names show the notice “This site is not yet available Please check back shortly,” with various third-party links to insurance services and other businesses. The Panel finds that this is not 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 H-D Michigan 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).
Complainant also asserts that Respondent’s remaining domain names do not resolve to an active website, and thus are not used for 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered the disputed domain names to prevent Complainant from using the ESURANCE mark in a corresponding domain name. Complainant does not elaborate on this argument, however, the Panel notes that prior UDRP panels have held that the registration of several infringing domain names creates a pattern of bad faith registrations that suffices for a finding of bad faith registration and use under Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”). Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Respondent is using the <esuranceman.com> domain name to offer insurance-related services with the intent to profit from the reputation and goodwill that consumers associate with Complainant’s name and marks. The Panel finds that Respondent’s use of the <esuranceman.com> domain name to offer directly competing services is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel further finds that the <esuranceadviser.com>, <esuranceagent.com>, and <esuranceman.mobi> domain names are being used to host third-party links to insurance services and other businesses, evidence of bad faith under Policy ¶ 4(b)(iv). 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).”).
Respondent’s passive holding of the <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceagency.biz>, <esuranceagency.net>, <esuranceagency.org>, and <esuranceman.biz> domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Lastly, Complainant argues that Respondent must have been aware of the ESURANCE mark prior to registering the disputed domain names, as the mark was famous in the insurance business at the time Respondent registered the domain names. The Panel agrees and finds that, due to the fame of Complainant's mark in the industry represented, Respondent had actual knowledge of the mark and Complainant's rights, further evidence of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that 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 <einsuranceagent.biz>, <einsurancebiz.biz>, <esuranceadviser.com>, <esuranceagent.com>, <esuranceman.biz>, <esuranceman.com>, <esuranceman.mobi>, <esuranceagency.biz>, <esuranceagency.net>, and <esuranceagency.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 4, 2012
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