national arbitration forum

 

DECISION

 

The Travelers Indemnity Company v. Douglas Baxster

Claim Number: FA1309001519093

PARTIES

Complainant is The Travelers Indemnity Company (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA.  Respondent is Douglas Baxster (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mytravlers.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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received payment on September 11, 2013.

 

On September 12, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <mytravlers.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 September 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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@mytravlers.com.  Also on September 18, 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 October 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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

  1. Complainant
    1. Complainant, The Travelers Indemnity Company, is one of the leading providers of personal property and casualty insurance in the United States.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRAVELERS mark (e.g., Reg. No. 1,611,053, registered August 28, 1990).
    3. The domain name <mytravlers.com> is confusingly similar to Complainant’s famous and federally registered TRAVELERS mark because it is comprised of a slight and phonetically similar misspelling of Complainant’s mark, the possessive term “my,” and the non-distinguishing generic top-level domain (“gTLD”) “.com.”
    4. Respondent has no rights or legitimate interests in the domain name.

                                          i.    Respondent is not and has not been commonly known by the domain name.

                                         ii.    Respondent’s registration and use of the domain name for a pay-per-click website featuring sponsored-link advertisements for directly competing insurance companies and other commercial websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.

                                        iii.    The fact that the domain name is a typosquatted version of Complainant’s domain name <mytravelers.com> is additional evidence that Respondent lacks a legitimate interest in the domain name.

    1. Respondent has registered and is using the domain name in bad faith.

                                          i.    Respondent has a bad-faith pattern of registering trademark-related domain names as shown by the two prior adverse UDRP decisions against Respondent.

                                         ii.    Respondent unfairly disrupts Complainant’s business by using the domain name for a website featuring sponsored-link advertisements for websites advertising and promoting directly competing insurance services and products, as well as a search category for one of Complainant’s competitors.

                                        iii.    Respondent uses the domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s TRAVELERS mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website and the services and products advertised on Respondent’s website.

                                       iv.    Respondent’s registration and use of the domain name ensnares Internet users who misspell Complainant’s domain name <mytravelers.com> constitutes typosquatting and additional evidence of Respondent’s bad faith.

                                        v.    There is no question that Respondent had knowledge of Complainant’s rights in the TRAVELERS mark when he registered the domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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 contends that it is one of the leading providers of personal property and casualty insurance in the United States. Complainant argues that it is the owner of trademark registrations with the USPTO for the TRAVELERS mark (e.g., Reg. No. 1,611,053, registered August 28, 1990). The Panel notes that Respondent appears to reside and operate within the United States. Therefore, the Panel concludes that Complainant has adequately demonstrated its rights in the TRAVELERS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. 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 contends that Respondent’s domain name <mytravlers.com> is confusingly similar to Complainant’s TRAVELERS mark because it is comprised of a slight and phonetically similar misspelling of Complainant’s mark, the possessive term “my,” and the non-distinguishing gTLD “.com.” The Panel holds that Respondent’s omission of a letter in Complainant’s mark 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”). The Panel determines that Respondent’s addition of generic terms such as “my” does not negate a confusing similarity analysis under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel determines that Respondent’s inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <mytravlers.com> domain name is confusingly similar to Complainant’s TRAVELERS mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

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.”).

 

Complainant alleges that Respondent is not and has not been commonly known by the domain name. Complainant argues that there is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the domain name. Complainant also asserts that Respondent is not a licensee of Complainant, and Complainant has never authorized Respondent to register or use the domain name or the TRAVELERS mark. Therefore, the Panel determines that Respondent is not commonly known by the <mytravlers.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant asserts that Respondent’s registration and use of the domain name for a pay-per-click website featuring sponsored-link advertisements for directly competing insurance companies and other commercial websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel notes that Respondent’s <mytravlers.com> domain name features competing links titled “Travelers Bill Pay,” “Travelers Home Insurance,” “Auto and Home Insurance,” and others. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found 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. Therefore, the Panel finds that Respondent’s use of the <mytravlers.com> domain name does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant contends that the fact that the domain name is a typosquatted version of Complainant’s domain name <mytravelers.com> is additional evidence that Respondent lacks a legitimate interest in the domain name. The Panel notes that while Respondent’s <mytravlers.com> domain name may be a typosquatted version of Complainant’s <mytravelers.com> domain name, Respondent’s <mytravlers.com> domain name is not a typosquatted version of Complainant’s TRAVELERS mark, as adding a word to a mark is not considered typosquatting because it is more intentional that a simple misspelling, which panels usually consider to constitute typosquatting. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). Therefore, the Panel concludes that Respondent has not engaged in typosquatting under Policy ¶ 4(a)(ii).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant contends that Respondent unfairly disrupts Complainant’s business by using the <mytravlers.com> domain name for a website featuring sponsored-link advertisements for websites advertising and promoting directly competing insurance services and products, as well as a search category for one of Complainant’s competitors. The Panel notes that Respondent’s <mytravlers.com> domain name features links that directly compete with Complainant titled “Travelers Bill Pay,” “Travelers Home Insurance,” “Auto and Home Insurance,” and others. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel found that “Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant.  The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).” Accordingly, the Panel finds that Respondent’s use of the <mytravlers.com> domain name disrupts Complainant’s legitimate business, showing bad faith use and registration under Policy ¶ 4(b)(iii).

 

Complainant claims that Respondent uses the <mytravlers.com> domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s TRAVELERS mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website and the services and products advertised on Respondent’s website. The Panel notes that Respondent’s <mytravlers.com> domain name features links that directly compete with Complainant titled “Travelers Bill Pay,” “Travelers Home Insurance,” “Auto and Home Insurance,” and others. The Panel notes that Respondent presumably commercially gains from these linked websites. Therefore, the Panel holds that Respondent’s use of the disputed domain name constitutes attraction for commercial gain, proving bad faith use and registration under Policy ¶ 4(b)(iv). 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 Respondent’s registration and use of the <mytravlers.com> domain name ensnares Internet users who misspell Complainant’s domain name <mytravelers.com> constitutes typosquatting and additional evidence of Respondent’s bad faith. The Panel notes that while Respondent’s <mytravlers.com> domain name may be a typosquatted version of Complainant’s <mytravelers.com> domain name, Respondent’s <mytravlers.com> domain name would not constitute a typosquatted version of Complainant’s TRAVELERS mark, as adding a word to a mark is not considered typosquatting because it is a change greater than one that could be an accidental misspelling. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel determines that Respondent has not engaged in typosquatting under Policy ¶ 4(a)(iii).

 

Complainant argues that there is no question that Respondent had knowledge of Complainant’s rights in the TRAVELERS mark when he registered the domain name. Complainant asserts that Respondent’s knowledge of Complainant’s rights in the TRAVELERS mark is evidenced by the fact that (a) Complainant’s TRAVELERS mark is famous, (b) the domain name is a typosquatted version of Complainant’s domain name <mytravelers.com>, which Complainant has used for many years in connection with offering online account management to its customers, (c) Respondent uses the domain name to advertise directly competing insurance services, and (d) Respondent has a pattern of registering trademark-related domain names and typosquatting activities. The Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).

 

Complainant has proven this element.

 

DECISION

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

 

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

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  October 24, 2013

 

 

 

 

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