IMT Services Corporation v. Zhao XinWei
Claim Number: FA1303001488864
Complainant is IMT Services Corporation (“Complainant”), represented by Fritz L Schweitzer of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Zhao XinWei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insuremtrip.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2013; the National Arbitration Forum received payment on March 7, 2013.
On March 7, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <insuremtrip.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@insuremtrip.com. Also on March 7, 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 April 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
i. Respondent is not commonly known by the domain name.
ii. Respondent is using the domain name to divert Internet users to commercial websites of third parties that provide services in direct competition with Complainant.
i. Respondent used the domain name to divert Internet users for commercial gain.
ii. Respondent had actual and constructive notice of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is IMT Services Corporation who list its address as Warwick, RI, USA. Complainant owns several domestic and international registrations for the mark INSURE MY TRIP. Complainant has been using the mark since 2000 in connection with the provision of travel insurance services. Complainant also owns various web registrations for use in its business endeavors including <insuremytrip.com>, <insuremytraveler.com> and <insuremygroup.com>.
Respondent is Zhao Xin Wei who’s address is listed as Shanghai, China. Respondent’s registrar list its address as Scottsdale, AZ, USA. Respondent registered the disputed domain name on or about January 19, 2012.
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, IMT Services Corporation, asserts that it has been using the INSURE MY TRIP mark in interstate commerce in the U.S. and elsewhere since 2000, in connection with providing travel insurance related services. Complainant argues that it registered the domain <insuremytrip.com> on September 28, 1999. Complainant contends that it is the owner of trademark registrations with the USPTO for the INSURE MY TRIP mark (Reg. No. 3,007,162, registered October 18, 2005) and for the INSUREMYTRIP.COM (Reg. No. 2,866,245, registered July 27, 2004). See Complainant’s Exhibit 1. The Panel notes that although Respondent appears to reside in China, Complainant does not need to register its mark in the country that Respondent operates in under Policy ¶ 4(a)(i). See 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 Panel finds that Complainant’s registration of the INSURE MY TRIP mark with the USPTO sufficiently demonstrates its rights in the 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)).
Complainant argues that Respondent’s <insuremtrip.com> domain name is confusingly similar to Complainant’s INSURE MY TRIP mark. Complainant claims that the disputed domain differs from Complainant’s mark only by the omission of the letter “y.” The Panel finds that the omission of a letter does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Complainant asserts that it is well-settled that the presence of a gTLD, such as “.com”, in a disputed domain is irrelevant to UDRP ¶ 4(a)(i) analysis. The Panel notes that Respondent removes the spaces between “INSURE,” “MY,” and “TRIP” in Complainant’s mark. The Panel finds that the removal of spaces and the addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <insuremtrip.com> domain name is confusingly similar to Complainant’s INSURE MY TRIP mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims that Respondent is not commonly known by the domain name. Complainant asserts that as set forth in the registration information for the disputed domain provided by Respondent, Respondent uses the name of “Zhao Zin Wei.” See Complainant’s Exhibit 2. Complainant asserts that Respondent is not authorized by Complainant to use Complainant’s INSURE MY TRIP mark in its domain name or otherwise. The Panel finds that Respondent is not commonly known by the disputed 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).
Complainant argues that Respondent is using the domain name to divert Internet users to commercial websites of third parties that provide services in direct competition with Complainant. The Panel notes that Respondent’s domain name resolves to a website featuring competing insurance hyperlinks, such as “INSUREMYTRIP.COM,” “INSURANCE FOR INTL TRAVEL,” “MEDICAL TRAVEL INSURANCE,” and others. See Complainant’s Exhibit 4. The Panel finds that Respondent’s use of the disputed domain name to provide competing links is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent used the domain name to divert Internet users for commercial gain. Complainant contends that Respondent is using the domain name to link to various third-parties offering services in direct competition with Complainant. The Panel again notes that Respondent’s domain name resolves to a website featuring competing insurance hyperlinks, such as “INSUREMYTRIP.COM,” “INSURANCE FOR INTL TRAVEL,” “MEDICAL TRAVEL INSURANCE,” and others. See Complainant’s Exhibit 4. The Panel finds that Respondent’s use of the domain name to feature links in direct competition with Complainant evidences bad faith use and registration under Policy ¶ 4(b)(iv). 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <insuremtrip.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 15, 2013
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