Lincoln National Corporation v. Global Access
Claim Number: FA1301001478665
Complainant is Lincoln National Corporation (“Complainant”), Pennsylvania, USA. Respondent is Global Access (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincolnfinancialgroup.com>, registered with Fabulous.com Pty Ltd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2013; the National Arbitration Forum received payment on January 4, 2013.
On January 6, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <lincolnfinancialgroup.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2013 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@lincolnfinancialgroup.com. Also on January 14, 2013, 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 February 7, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the LINCOLN FINANCIAL GROUP mark via its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,147,299 registered March 31, 1998). Complainant also owns trademark registrations with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA534805 registered October 17, 2000) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 000939728 registered December 23, 1999). Complainant uses the LINCOLN FINANCIAL GROUP mark to offer insurance services in the field of life insurance, annuities, and pensions. Complainant offers life insurance underwriting services, institutional investment management services, advisory services, and mutual fund services under is LINCOLN FINANCIAL GROUP mark. Complainant is a Fortune 500 company that originated in 1905 with the mission of assisting its clients in building, protecting, and distributing their wealth. Complainant is a leader in the United States in life and annuities sales and offers a broad range of services relating to retirement, group disability, and dental insurance.
Respondent registered the <lincolnfinancialgroup.com> domain name and currently fails to actively use the resolving website. Respondent previously used the resolving website to display generic links to websites that competed with Complainant’s insurance business. Respondent received fees in exchange for hosting the hyperlinks displayed at the resolving website. The <lincolnfinancialgroup.com> domain name is identical to Complainant’s mark, and Respondent cannot claim to be commonly known by the disputed domain name as Respondent is not affiliated with Complainant in any way. Respondent does not make a bona fide offering of goods or services under the disputed domain name and registered the domain in bad faith, as demonstrated by its ownership of multiple domain names using other entities’ marks, passive holding of the disputed domain name, and attempt to sell or rent the <lincolnfinancialgroup.com> domain name for a sum in excess of the registration costs. Respondent was aware of Complainant’s mark at the time it registered the <lincolnfinancialgroup.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 contends that it owns rights in the LINCOLN FINANCIAL GROUP mark through its various registrations with global agencies, including the USPTO (e.g. Reg. No. 2,147,299 registered March 31, 1998), CIPO (Reg. No. TMA534805 registered October 17, 2000), and OHIM (Reg. No. 000939728 registered December 23, 1999). The Panel finds that Complainant’s multiple international trademark registrations serve to secure Complainant’s rights in the mark under Policy ¶ 4(a)(i), regardless of whether the mark is registered in the country where Respondent is located. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The <lincolnfinancialgroup.com> domain name is identical to Complainant’s LINCOLN FINANCIAL GROUP mark, as the domain name consists of the entirety of said mark.
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the <lincolnfinancialgroup.com> domain name, as the WHOIS information reflects that Respondent is known by a name unrelated to the disputed domain name. The Panel agrees, and finds that Respondent is not commonly known by the <lincolnfinancialgroup.com> domain name, thereby indicating a lack of rights and legitimate interests in the domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent previously used the disputed domain name to link Internet users to other websites via hyperlinks sponsored by competing entities, for which Respondent received pay-per-click fees. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), stated that when the respondent failed to offer goods or services beyond a series of hyperlinks to third-party websites, it did not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. This Panel similarly concludes that Respondent’s prior use of the domain name to link Internet consumers with Complainant’s competitors was 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).
Complainant asserts that Respondent currently fails to use the <lincolnfinancialgroup.com> domain name in an active manner, as the disputed domain name currently has no website associated with it. The Panel finds that failure by Respondent to establish an active website in association with the disputed domain name does not demonstrate use of the domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and use of a domain name identical to Complainant’s mark to link Internet users to competing hyperlinks at the resolving website constitutes evidence that Respondent had actual knowledge of Complainant’s mark at the time it registered the <lincolnfinancialgroup.com> domain name, which demonstrates Respondent’s bad faith registration under Policy ¶ 4(a)(iii).
Complainant contends that Respondent has repeatedly registered domain names that incorporate marks belonging to other entities. See Transamerica Corp. v. Global Access, FA 1424050 (Nat. Arb. Forum February 28, 2012), and Deere & Co. v. Global Access, FA 1180969 (Nat. Arb. Forum June 2, 2008). The Panel concludes that Respondent demonstrates “serial cybersquatting” by its history of registering domain names using third parties’ trademarks, which is further evidence of its pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s previous use of the resolving website to feature advertising links to competing entities and presumably collect fees for this service demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent intentionally created a likelihood of confusion with Complainant’s mark to attract Internet users to the resolving website in order to profit. The Panel determines that Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv) is shown by its prior use of the <lincolnfinancialgroup.com> domain name to attract Internet consumers to its website by confusing them with a domain name identical to Complainant’s mark in order to make a commercial profit. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith 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).
Complainant contends that Respondent currently causes the <lincolnfinancialgroup.com> domain name to resolve to a blank page and asserts that Respondent’s passive holding of the domain name is in bad faith. The panel in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), concluded that the respondent’s failure to make an active use of the domain name satisfies Policy ¶ 4(a)(iii). This Panel similarly finds that Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Thus, Complainant has also 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 <lincolnfinancialgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 21, 2013
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