Liberty Mutual Insurance Company v. Domain Administration Limited c/o David Halstead
Claim Number: FA0706001011883
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Christopher
Sloan, of Liberty Mutual Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <peerlessinsurancecompany.com>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On June 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@peerlessinsurancecompany.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 makes the following assertions:
1. Respondent’s <peerlessinsurancecompany.com> domain name is confusingly similar to Complainant’s PEERLESS INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <peerlessinsurancecompany.com> domain name.
3. Respondent registered and used the <peerlessinsurancecompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, is one of the
largest multi-line insurers in the property and casualty field. In connection with the provision of their insurance-related
products and services, Complainant has registered the PEERLESS INSURANCE mark
(Reg. No. 2,862,578 issued
Respondent registered the <peerlessinsurancecompany.com>
domain name on
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."
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.”).
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.
Complainant attempts to establish rights in the PEERLESS INSURANCE
mark through its registration of the mark with the USPTO. The Panel finds Complainant’s registration
with the USPTO, dated nearly a year before Respondent registered the disputed
domain name, sufficiently establishes its rights in the mark pursuant to Policy
¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <peerlessinsurancecompany.com> domain name contains Complainant’s mark in its entirety and adds the generic term “company,” as well as the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term and a gTLD to an otherwise identical mark fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In scenarios where Complainant has made a prima facie case in support of its
allegations, the burden shifts to Respondent to set forth evidence indicating
that it has rights or legitimate interests in accordance with Policy ¶
4(a)(ii). See SEMCO Prods., LLC v. dmg world media (
Respondent’s <peerlessinsurancecompany.com> domain name resolves to a search engine website offering links to various third-party commercial websites, some of which offer products and services in direct competition with Complainant. The Panel finds that such use 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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)).
Complainant contends that Respondent is not commonly known by the disputed domain name. Indeed, nothing in the record indicates that Respondent is commonly known by the <peerlessinsurancecompany.com> domain name. Further, an examination of Respondent’s WHOIS registration information reveals that the registrant of the <peerlessinsurancecompany.com> domain name is “Domain Administration Limited c/o David Halstead.” Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As indicated above, Respondent’s disputed domain name resolves to Respondent’s search engine website, where links to competing third-party websites are provided. The Panel finds that such use constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent registered and uses a confusingly similar domain
name to attract unwary Internet users to its own website, presumably with the
intent of procuring financial gain through the use of “pay-per-click”
advertising revenue. Accordingly, the
Panel finds that Respondent’s registration and use indicates an attraction for
commercial gain in accordance with Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting from
click-through fees); see also 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.’”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peerlessinsurancecompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY ( Ret.)
Dated: July 30, 2007
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