Midland National Life Insurance Co. v. N/A / David Haan
Claim Number: FA1211001470638
Complainant is Midland National Life Insurance Co. (“Complainant”), represented by Sean Garrison of Lewis and Roca LLP, Arizona, USA. Respondent is N/A / David Haan (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <midlandinsurance.net>, registered with Unpower, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2012; the National Arbitration Forum received payment on November 9, 2012.
On November 17, 2012, Unpower, Inc. confirmed by e-mail to the National Arbitration Forum that the <midlandinsurance.net> domain name is registered with Unpower, Inc. and that Respondent is the current registrant of the name. Unpower, Inc. has verified that Respondent is bound by the Unpower, 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 November 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@midlandinsurance.net. Also on November 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 December 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <midlandinsurance.net> domain name, the domain name at issue, is confusingly similar to Complainant’s MIDLAND NATIONAL LIFE and MIDLAND NATIONAL marks.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MIDLAND NATIONAL LIFE and MIDLAND NATIONAL marks and uses these marks in connection with products and services related to insurance and the annuity industry. Respondent registered the disputed domain name on March 16, 2012. Complainant has rights via United States Patent & Trademark Office (“USPTO”) registrations in both the MIDLAND NATIONAL LIFE mark (Reg. No. 2,787,860 registered December 2, 2003) and MIDLAND NATIONAL mark (Reg. No. 2,818,658 registered March 2, 2004). Respondent’s <midlandinsurance.net> domain name looks and sounds similar, and has a similar meaning, to Complainant’s marks. Respondent removes only the terms disclaimed in the mark following the word “MIDLAND.” Respondent also adds the generic top-level domain (“gTLD”) “.net” and the descriptive term “insurance” to the shortened form of Complainant’s mark. The addition of a gTLD does not diminish the confusing nature of the domain name.The term “insurance” is merely descriptive of the products and services Complainant offers in its use of the marks.
Respondent is not commonly known by the Complainant’s marks. Complainant has not authorized or licensed Respondent to use Complainant’s marks. The domain name’s resolving website asks Internet users to enter their ZIP code, whereupon the user is always directed to a page of click-through links to major American insurance companies, regardless of the ZIP code entered. Thus, the domain name is being used to operate a pay-per-click site that provides no bona fide offering of goods or services or any legitimate or fair noncommercial use under Policy ¶ 4(c)(i) and (iii). Respondent formatted the <midlandinsurance.net> domain name’s resolving website to be similar in appearance to Complainant’s <mnlife.com> domain, which Complainant uses in the promotion of goods and services sold under Complainant’s marks. Respondent is therefore trading on Complainant’s image, marks, and goodwill. Respondent has been found to have registered a domain name in bad faith in four previous UDRP decisions and has also registered other domain names that infringe on the rights of Complainant’s competitors: <access-insurance.org> (ACCESS) and <fidelity-insurance.com> (FIDELITY). The website resolving to the disputed domain name redirects Internet users to third-party websites that compete with Complainant. This is disruptive to Complainant’s business. Respondent is profiting by creating a likelihood of confusion that it is Complainant. Each time a viewer clicks on a sponsored link on Respondent’s website, Respondent is paid. Customers seeking Complainant’s products may arrive at the disputed domain name and subsequently be redirected by Respondent to Complainant’s competitors. Respondent knew or should have known of the registration of Complainant’s marks. Furthermore, Respondent has used the disputed domain name to solicit advertisements to businesses that compete with Complainant.
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 has rights in the MIDLAND NATIONAL LIFE and MIDLAND NATIONAL marks and uses these marks in connection with products and services related to insurance and the annuity industry. Complainant bases its rights on its USPTO trademark registrations in both the MIDLAND NATIONAL mark (Reg. No. 2,818,658 registered on March 2, 2004) and MIDLAND NATIONAL LIFE mark (Reg. No. 2,787,860 registered December 2, 2003). The registration of a mark with the USPTO satisfies Complainant’s burden of proving its rights in the marks. 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)).
The <midlandinsurance.net> domain name looks and sounds similar, and has a similar meaning, to Complainant’s marks. Respondent removes the terms disclaimed in the mark following the word “MIDLAND.” The omission of terms in a registered mark does not ordinarily prevent confusing similarity. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Complainant further notes that Respondent also adds the generic top-level domain (“gTLD”) “.net,” which should not factor into this analysis, and the descriptive term “insurance” to the shortened form of Complainant’s mark. The Panel finds that Complainant is correct in dismissing the addition of the gTLD “.net.” See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The relationship between the added term “insurance” and the services provided by Complainant under its marks make Respondent’s coupling of the terms “MIDLAND” and “insurance” not only insufficient to prevent confusing similarity with Complainant’s marks but also likely to increase confusion. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, Respondent’s <midlandinsurance.net> domain name is confusingly similar to Complainant’s MIDLAND NATIONAL LIFE and MIDLAND NATIONAL marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 has not authorized or licensed Respondent to use Complainant’s marks. The WHOIS information lists the registrant of the <midlandinsurance.net> domain name as “David Haan.” Respondent is not commonly known by the <midlandinsurance.net> domain name under Policy ¶ 4(c)(ii) because no evidence in the record, including the WHOIS information, links Respondent with the disputed domain name. 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).
The <midlandinsurance.net> domain name’s resolving website asks Internet users to enter their ZIP code, whereupon the user is always directed to the same page of click-through links to major American insurance firms, regardless of the ZIP code entered. The domain name is therefore being used to operate a pay-per-click site that provides no bona fide offering of goods or services nor any legitimate or fair noncommercial use under Policy ¶ 4(c)(i) and (iii). Respondent’s use of the disputed domain name to send Internet users through competing hyperlinks does not come within the Policy’s meaning of a bona fide offering of goods and/or services according to Policy ¶ 4(c)(i), nor does it serve a legitimate noncommercial of fair use under ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)).
Respondent formatted the <midlandinsurance.net> domain name’s resolving website to be similar in appearance to Complainant’s <mnlife.com> domain, which Complainant uses in the promotion of its goods and services sold under its marks. Because of this, Respondent is trading on Complainant’s image, marks, and goodwill. Accordingly, Respondent is attempting to pass itself off as Complainant, which strengthens a finding against Respondent in regards to Policy ¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). For these reasons, Respondent has neither rights nor legitimate interests in the <midlandinsurance.net> domain name under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has been found to have registered a domain name in bad faith in four previous UDRP decisions. See Auto Owners Ins. Co. v. Haan, FA 1423584 (Nat. Arb. Forum Feb. 22, 2012); see also State Farm Mutual Auto. Ins. Co. v. Haan, FA 948470 (Nat. Arb. Forum May 9, 2007); see also Arbella Mutual Ins. Co. v. Private, Registration, Domains By Proxy, LLC, DomainsByProxy.com / David Haan, D2012-0615 (WIPO May 5, 2012); see also Grange Mutual Casualty Co. v. Domains By Proxy, LLC / David Haan, D2012-1511 (WIPO Sept. 29, 2012). A respondent’s history of bad faith registration in prior UDRP cases is indicative of a pattern of bad faith registration and use in a current case under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel therefore concludes that Respondent registered and uses the <midlandinsurance.net> domain name as part of a pattern of bad faith pursuant to Policy ¶ 4(a)(iii).
Further, the website resolving from the disputed domain name redirects Internet users to third-party websites that compete with Complainant. Previous panels have construed the applicable Policy provision, ¶ 4(b)(iii), broadly as to who may be considered a competitor. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). This Panel agrees that Respondent is acting as a competitor of Complainant by using third-party hyperlinks to redirect Internet users to other large American insurance firms that compete with Complainant and finds that Respondent’s actions disrupt Complainant’s business and exhibit bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is profiting by creating a likelihood of confusion that it is Complainant. Each time a viewer clicks on a sponsored link on Respondent’s website, Respondent is paid. Customers seeking Complainant’s products may arrive at the <midlandinsurance.net> domain name and subsequently be redirected by Respondent to the Complainant’s competitors. Respondent’s use of Complainant’s marks, and the fact that the disputed domain name resolves to a website designed similarly to Complainant’s own <mnlife.com> mark, will confuse Internet users and result in commercial gain for Respondent when they intended to seek and do business with Complainant. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, under Policy ¶ 4(b)(iv), Respondent created a likelihood of confusing Internet users on the disputed domain name’s resolving website in order to secure commercial gains.
The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <midlandinsurance.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 2, 2013
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