national arbitration forum

 

DECISION

 

Erie Insurance Exchange v. Csonaki Enterprises

Claim Number: FA1307001511954

 

PARTIES

Complainant is Erie Insurance Exchange (“Complainant”), represented by Jason E. Mueller of Locke Lord Bissell & Liddell LLP, Texas, USA.  Respondent is Csonaki Enterprises (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <erieinsuranc.com>, registered with FABULOUS.COM PTY LTD.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2013; the National Arbitration Forum received payment on July 29, 2013.

 

On July 29, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <erieinsuranc.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 July 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@erieinsuranc.com.  Also on July 30, 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 August 28, 2013, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <erieinsuranc.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ERIE mark.

 

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.

 

FINDINGS

Complainant is involved in the business of property and casualty insurance underwriting, life insurance underwriting, annuity underwriting, and related insurance matters.  Complainant owns rights in its ERIE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,335,916 registered May 14, 1985)  and owns rights in its ERIE INSURANCE mark through its registration with the USPTO (Reg. No. 3,094,824 registered May 23, 2006).  Complainant has developed substantial rights and goodwill in its registered marks and its official website is located at <www.erieinsurance.com>.

 

Respondent’s <erieinsuranc.com> domain name is confusingly similar to Complainant’s ERIE INSURANCE mark. Respondent removes the letter “e” from Complainant’s ERIE INSURANCE mark and adds the generic top-level domain “gTLD” “.com” to the mark in the disputed domain name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is misleading consumers of Complainant’s to a commercial website not affiliated with Complainant’s business. Respondent’s disputed domain name redirects Internet users to a commercial website providing links to third party commercial websites offering competing products. Respondent is not commonly known by the disputed domain name which was registered on February 17, 2005.  Respondent had knowledge of Complainant’s ERIE marks at the time it registered the disputed domain name.  Further, Respondent is financially profiting from its use of the disputed domain name by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ERIE marks as to the source, sponsorship, affiliation, or endorsement of such website and locations.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant is in the business of selling insurance products including property and casualty insurance writing, life insurance underwriting, annuity underwriting, and other related insurance matters. Complainant argues has used its ERIE marks in relation to its business since as early as 1935. Complainant asserts its rights in its ERIE and ERIE INSURANCE marks through its registrations with the USPTO: ERIE  Reg. No. 1,335,916 registered May 14, 1985; ERIE INSURANCE  Reg. No. 3,094,824 registered May 23, 2006.  Evidence of a registration with a federal trademark authority is sufficient to assert rights in a given mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Therefore the Panel finds that Complainant has rights in the ERIE and ERIE INSURANCE marks under Policy ¶ 4(a)(i).

 

Respondent’s <erieinsuranc.com> domain name is confusingly similar to Complainant’s ERIE INSURANCE mark under Policy ¶ 4(a)(i). Respondent’s <erieinsuranc.com> domain name features Complainant’s entire mark. Respondent removes the “e” in “insurance” from Complainant’s registered mark and adds the gTLD “.com" and has also removed the spaces between the words “Erie” and “Insurance.” Variations such as deleting letters, removing spaces and adding a gTLD are insufficient to differentiate a disputed domain name from a registered mark. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).  Accordingly, Respondent’s <erieinsuranc.com> domain name is confusingly similar to Complainant’s ERIE INSURANCE mark under Policy 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

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.”).

 

Respondent has no rights or legitimate interests in the <erieinsuranc.com> disputed domain name because Respondent is not commonly known by the disputed domain name.  The WHOIS information for the disputed domain name lists “Csonaki Enterprises” as the domain name registrant.  There is no relation between Respondent’s disputed domain name and Complainant’s business. Previous panels have found that a respondent is not commonly known by a disputed domain name if there is no indication on the record that respondent is commonly known by 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 Panel finds that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Respondent  uses the disputed domain name to resolve to a commercial website, not affiliated with or approved by Complainant.  Respondent uses the confusingly similar disputed domain name on its website which featues links to other websites offering goods that compete with Complainant’s business. The website associated with Respondent’s  <erieinsuranc.com> domain name displays links such as; “Geico Auto Insurance,” “Free Auto Insurance Quote,” “Car Insurance- $19 Month,” “Sweet Car Insurance Deal,” and “Erie Insurance Company.” Previous panels have found that using a confusingly similar domain name to feature third party links that compete with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. 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)). Based on Complainant’s contentions and evidence presented to the Panel, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

 

Registration and Use in Bad Faith

Respondent uses the <erieinsuranc.com> domain name primarily to compete with Complainant because the disputed domain name features specific competing links such as <www.geico.com>,  <esurance.com>, and <direct-auto-insurance-rates.com>. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring third-party links that compete with a complainant’s business disrupts complainant’s business in bad faith pursuant to Policy 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”) The Panel thus concludes that Respondent registered and is using the <erieinsuranc.com> domain name in bad faith under Policy 4(b)(iii).

 

Respondent is using a confusingly similar domain name to intentionally  attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website location.  Respondent is being paid by businesses which directly benefit from Respondent’s use of the disputed domain name to feature third party links. Previous panels have found bad faith use and registration when a respondent uses a domain name that is confusingly similar to a complainant’s registered mark to resolve to a website featuring numerous third party links from which Respondent likely profits. 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).”).

 

Complainant contends that its ERIE mark has been used for more than 70 years prior to Respondent’s registration of its <erieinsuranc.com>  domain name on February 17, 2005.  Accordingly, Respondent had constructive knowledge of Complainant's rights in the mark. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and the use made of the website associated with the domain name at issue, Respondent had actual knowledge of the mark and Complainant's rights when the disputed domain name was registered. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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 Policy ¶ 4(a)(iii) has been established. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <erieinsuranc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  August 29, 2013

 

 

 

 

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