Assurant, Inc. v. ICS INC.
Claim Number: FA1401001539683
Complainant is Assurant, Inc. (“Complainant”), represented by Sarah C. Hsia of Sneed PLLC, North Carolina, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwassurantproviders.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2014; the National Arbitration Forum received payment on January 17, 2014.
On January 22, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <wwwassurantproviders.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2014 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@wwwassurantproviders.com. Also on January 23, 2014, 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 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <wwwassurantproviders.com> domain name is confusingly similar to Complainant’s ASSURANT mark.
2. Respondent does not have any rights or legitimate interests in the <wwwassurantproviders.com> domain name.
3. Respondent registered and uses the <wwwassurantproviders.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the ASSURANT mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,543,367 registered February 26, 2002), used in connection with insurance services.
Respondent registered the disputed domain name on February 2, 2012, and uses it to resolve to a parked website that promotes links to Complainant’s competitors.
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.”).
The Panel finds that Complainant’s registration of the ASSURANT mark with the USPTO sufficiently establishes 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)). A complainant does not need to register its mark in the respondent’s country of residence in order to establish its rights in the mark. 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).
Respondent’s <wwwassurantproviders.com> domain name incorporates Complainant’s entire ASSURANT mark and merely adds the prefix “www,” the descriptive term “providers,” and the generic top-level domain (“gTLD”) “.com.” The affixation of a gTLD does not distinguish the domain name from Complainant’s mark under 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). Previous panels have also found that a domain name is confusingly similar to a complainant’s mark where the domain name fully appropriates the mark while adding the “www” prefix. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark). The Panel notes that it has also previously been held that a domain name is confusingly similar to a complainant’s mark where the domain name incorporates the mark and adds a word that is descriptive of the complainant’s business. See, e.g., Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Thus, the Panel finds that the changes to Complainant’s mark in the <wwwassurantproviders.com> domain name are insufficient to distinguish the domain name from the mark, and that the disputed domain name is confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because Respondent was not authorized by Complainant to use the ASSURANT mark in a domain name or for any other purpose. The WHOIS information identifies “ICS INC.” as the registrant of the <wwwassurantproviders.com> domain name, which does not suggest that Respondent is commonly known by the disputed domain name. Previously panels have held that a respondent is not commonly known by a disputed domain name where the complainant asserts that it has not authorized the respondent to use the appropriated mark and there is nothing in the record, including the WHOIS information, to suggest that Respondent is commonly known by the disputed domain name. See, e.g., 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 thus finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that the disputed domain name is not being used for 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), because it resolves to a parked website promoting links to various competitors of Complainant in the insurance industry, including links Aetna and Humana. The Panel notes that the website resolving from <wwwassurantproviders.com> displays links such as “Aetna Health Insurance,” “Health Insurance for Families,” “Humana Health Insurance,” “Speed Up Your Mac,” and “English Grammar Checker.” It has previously been determined that the use of a disputed domain name to promote both competing and noncompeting commercial links is not a use protected under Policy ¶¶ 4(c)(i) or 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). Therefore, the Panel finds that the disputed domain name is not being used for 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 also asserts that the <wwwassurantproviders.com> domain name has been offered for sale to the public, which is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel agrees, noting that the resolving website displays an orange banner in the upper right-hand corner which states, “DOMAIN SALE – CLICK HERE TO BUY NOW +1 330-222-5147.” The Panel thus finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has offered the disputed domain name for sale, demonstrating bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) where the panel held that "[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner.” The Panel thus finds that Respondent registered the <wwwassurantproviders.com> domain name because of its potential value to Complainant or Complainant’s competitors, bad faith under Policy ¶ 4(b)(i).
Complainant argues that the disputed domain name disrupts its business because the disputed domain name resolves to a parked website that promotes links to Complainant’s competitors. Previous panels have held that a respondent demonstrates bad faith disruption of the complainant’s business under Policy ¶ 4(b)(iii) where the disputed domain name promotes commercial links to the complainant’s direct competitors. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“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 that Respondent has demonstrated bad faith registration and use of the <wwwassurantproviders.com> domain name pursuant to Policy ¶ 4(b)(iii) by using the disputed domain name to promote links to Complainant’s competitors in the insurance business.
Complainant further alleges that Respondent registered the disputed domain name with notice of Complainant’s rights in the ASSURANT mark, thus demonstrating bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees, based on the use of the disputed domain name, and finds that Respondent demonstrates further bad faith under Policy ¶ 4(a)(iii). See, e.g., 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).
Respondent has also engaged in typosquatting, because the disputed <wwwassurantproviders.com> domain name is simply a typographical error of Complainant’s own <www.assurantproviders.com> domain name. Previous panels have held that a respondent engages in typosquatting by registering a domain name that takes advantage of a typographical error that is likely to be made by Internet users seeking goods or services under the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Typosquatting is behavior is evidence of a respondent’s bad faith under Policy ¶ 4(a)(iii), because a typosquatted domain name is likely to mislead Internet users to believe that there is an affiliation between the respondent and the complainant. See, e.g., Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”). Thus, the Panel finds that Respondent’s typosquatting is additional evidence of Respondent’s bad faith registration and use of the disputed domain name.
The Panel finds that Complainant has 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 <wwwassurantproviders.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 21, 2014
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