Assurant, Inc. v. ICS INC.
Claim Number: FA1211001472672
Complainant is Assurant, Inc. (“Complainant”), represented by Nadya Sand of Alston & Bird, LLP, Georgia, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medassurantintersourcing.com>, registered with TUCOWS, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2012; the National Arbitration Forum received payment on November 26, 2012.
On November 26, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <medassurantintersourcing.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@medassurantintersourcing.com. Also on November 29, 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 31, 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:
Complainant uses its ASSURANT mark in the promotion of its insurance and financial services.
Respondent registered the disputed domain name on December 9, 2011.
Complainant has rights in the ASSURANT mark, and the <medassurantintersourcing.com> domain name is confusingly similar to such mark.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT mark (e.g., Reg. No. 2,543,367 registered on February 26, 2002). Such registrations make Complainant’s rights to the mark incontestable in the United States.
Respondent’s <medassurantintersourcing.com> domain name incorporates the entire ASSURANT mark adding only the descriptive prefix “med,” and a third party’s mark, “INTERSOURCING.” The term “med” is merely descriptive of the medical insurance Complainant sells. Furthermore, the addition of the generic top-level domain does not differentiate the disputed domain name from the Complainant’s mark. Respondent’s inclusion of the third party mark INTERSOURCING is also insufficient to distinguish a domain name.The combination of two registered marks does not create a new or different mark in which a respondent may have rights.
Respondent lacks rights or legitimate interests in the <medassurantintersourcing.com> domain name. Respondent is not commonly known by the name <medassurantintersourcing.com> nor does Respondent’s WHOIS record make any indication that it is known by that name. Respondent is not making a bona fide offering of goods or services because the disputed domain name resolves to a website that contains a list of hyperlinks to third party sites, some of which are competitors of Complainant. Complainant seeks to attract Internet users to the domain name in hopes that they will receive referral fees for sending Internet users through the competing hyperlinks.
Respondent registered and uses <medassurantintersourcing.com> domain name in bad faith. Complainant has filed cases against Respondent in the past, and in these cases it was found that Respondent had engaged in bad faith use and registration. Respondent’s purpose in registering the domain name is to mislead internet users into believing that Complainant is associated or affiliated with, or sponsors or endorses the disputed domain and Respondent. Respondent then profits from visits by mistaken Internet users through the sale of third-party advertisements.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for the ASSURANT mark.
Respondent is not authorized to use Complainant’s trademark.
Complainant has prevailed against Respondent in multiple UDRP arbitration proceedings. Respondent has also had numerous adverse UDRP decisions concerning complainants other than the instant complainant.
Respondent registered the at-issue domain name after Complainant acquired rights in the ASSURANT trademark.
Respondent is using the at-issue domain name to address a website displaying links to numerous third parties including Complainant’s competitors such as Humana.
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 demonstrates its rights in the ASSURANCE mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located outside of the USPTO’s jurisdiction or other jurisdictions where the mark is registered. 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 <medassurantintersourcing.com> domain name is confusingly similar to Complainant’s ASSURANT mark under Policy ¶ 4(a)(i). Respondent’s <medassurantintersourcing.com> domain name incorporates the entire ASSURANT mark adding only the descriptive prefix “med,” and a third party’s mark: “INTERSOURCING.” Descriptive or suggestive terms like “med,” which relate to Complainant business, only increase the potential for confusion between the at-issue domain name and Complainant’s trademark. Additionally, stringing together two or more trademarks does not make Respondent’s at-issue domain name dissimilar to Complainant’s registered mark. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors). Furthermore, it is well settled that the top level domain name, here “.com,” is irrelevant to Policy ¶4(a)(i) analysis and therefore does nothing to distinguish the at-issue domain name from Complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business. . . and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “ICS INC.” as the registrant of the disputed domain name and there is no evidence before the Panel which suggests that notwithstanding the contrary indication in the WHOIS record Respondent is known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under 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 at-issue domain name to address a website which displays links to third parties including at least one competing health insurance provider. Using the <medassurantintersourcing.com> domain name in this manner is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and 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, multiple Policy ¶4(b) bad faith circumstances exist from which the Panel may conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent uses its confusingly similar domain name to address a website displaying links directing Internet users to third parties related and unrelated to Complainant, some of whom are Complainant’s competitors. It is without doubt that Respondent earns “click-through” or “referral” fees when an Internet visitor utilizes one of these links. Using the confusingly similar <medassurantintersourcing.com> domain name in this manner indicates that Respondent registered the domain name with the intent to create confusion and false association with Complainant in order to attract Internet users for its own commercial gain. Such circumstances demonstrate bad faith registration and use 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.’”).
Complainant has prevailed against Respondent ICS Inc. in several other UDRP arbitration proceedings. In each case, Respondent was ordered to transfer the disputed domain name to Complainant. See for example Assurant, Inc. v. ICS Inc., FA1447091 (June 11, 2012), Assurant, Inc. v. ICS Inc., FA1458722 (Nat. Arb. Forum Sept. 28, 2002), and Assurant, Inc. v. ICS Inc., FA1460024 (Nat. Arb. Form Sept 5, 2012). Moreover, Respondent has been ordered to transfer offending domain names in numerous UDRP proceedings that were initiated by complainants other than the instant Complainant. Respondent’s established pattern of registering domain names that are identical or confusingly similar to registered trademarks suggests Respondent’s bad faith registration and use of the at-issue domain name 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>, <ayhoooreal ty .net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medassurantintersourcing.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 6, 2012
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