Liberty Mutual Insurance Company v. Hildegard Gruener
Claim Number: FA1403001549208
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse of Liberty Mutual Insurance Company, Massachusetts, USA. Respondent is Hildegard Gruener (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <libertymutual-com.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 18, 2014; the National Arbitration Forum received payment March 18, 2014.
On March 18, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <libertymutual-com.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@libertymutual-com.com. Also on March 24, 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 April 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant has rights in the LIBERTY MUTUAL mark through its registrations worldwide.
a. Complainant is one of the largest multi-line insurers in the property & casualty field with some 900 offices around the world. Complainant has used the LIBERTY MUTUAL mark in connection with its business and services in the United States since 1917.
b. Complainant owns numerous registrations for the LIBERTY MUTUAL mark some of which include:
i. United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,405,249 registered August 12, 1986).
ii. IP Australia (“IPA”) (Reg. No. 853,362 registered November 11, 2002).
iii. China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,990,169 registered January 21, 2003).
iv. Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 1136614 registered December 21, 2009).
v. United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,273,060 registered June 19, 2011).
c. Respondent’s <libertymutual-com.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark.
i. Respondent adds the word “com” and places a hyphen between Complainant’s mark and the word “com.”
2. Respondent has no rights to or legitimate interests in the <libertymutual-com.com> domain name.
a. Respondent is not commonly known by the disputed domain name. Complainant states that it has not authorized Respondent to use the LIBERTY MUTUAL mark in any way.
b. Respondent uses the disputed domain name to resolve to a website aimed at misleading and diverting consumers away from Complainant’s legitimate business.
3. Respondent registered and is using the <libertymutual-com.com> domain name in bad faith.
a. Respondent’s disputed domain name resolves to a website displaying links to third-party businesses that compete with Complainant for insurance quotes.
b. Respondent uses Complainant’s mark to attract Internet users to Respondent’s website for commercial gain. Respondent’s use of Complainant’s registered mark causes confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s resolving website displays Complainant’s mark along with pay-per-click links that redirect Internet users to third-party websites that compete with Complainant.
Complainant established that it has rights to and legitimate interest in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant states that it is one of the largest multi-line insurers in the property & casualty field with some 900 offices around the world. Complainant explains its use in the LIBERTY MUTUAL mark in connection with its business and services in the United States and contends that it has used the mark since 1917. Complainant additionally asserts that it has rights in the LIBERTY MUTUAL mark through its worldwide registrations. Complainant provides evidence of its numerous registrations for the LIBERTY MUTUAL mark, some of which include those with the following: USPTO (e.g., Reg. No. 1,405,249 registered August 12, 1986); IPA (Reg. No. 853,362 registered November 11, 2002); the Chinese SAIC (e.g., Reg. No. 1,990,169 registered January 21, 2003); the MIIP (Reg. No. 1,136,614 registered December 21, 2009); and the UKIPO (Reg. No. 2,273,060 registered June 19, 2011). Panels have traditionally found that a complainant has rights in a mark when it can provide evidence of a registration with a recognized trademark authority. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Univision Commc’ns Inc. v. Boyiko, FA 1429870 (Nat. Arb. Forum Mar. 22, 2012) (concluding that the complainant’s registration of its mark with the MIIP sufficiently demonstrated the complainant’s rights in the mark); see also Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy). Additionally, the Panel notes that a complainant need not register a mark in the location of Respondent. 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 therefore finds that Complainant has rights in the LIBERTY MUTUAL mark under Policy ¶ 4(a)(i).
Complainant further asserts that Respondent’s <libertymutual-com.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark under Policy ¶ 4(a)(i). Complainant states that Respondent adds the word “com” and places a hyphen between Complainant’s mark and the word “com.” Panels have frequently found that these variations are insufficient to differentiate a disputed domain name from a given mark. See Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel also notes that Respondent removes the space in Complainant’s LIBERTY MUTUAL mark and adds the generic top-level domain (“gTLD”) “.com.” Panels have continuously found that removing spaces and adding a gTLD does not differentiate the disputed domain name from the registered mark. See 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)). The Panel finds that Respondent’s <libertymutual-com.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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 of proof shifts to Respondent to show it does have such 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 such 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 contends that Respondent has no rights or legitimate interests in the <libertymutual-com.com> domain name under Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant states that it has not authorized Respondent to use the LIBERTY MUTUAL mark in any way, and the WHOIS information indicates that the registrant of the disputed domain name is “Hildegard Gruener.” Panels have previously found that a respondent is not commonly known by a disputed domain name where there is no evidence on the record or otherwise indicating that respondent has established the ability to claim that it is commonly known, by the public, as the disputed domain name. See 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 Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant additionally contends that Respondent uses the disputed domain name to resolve to a website aimed at misleading and diverting consumers away from Complainant’s legitimate business. The Panel notes that the screen shot provided by Complainant portrays Respondent’s use of the <libertymutual-com.com> domain name as resolving to a parked website displaying pay-per-click competing links. In the past, panels have typically found that using a confusingly similar domain name to resolve to a website displaying pay-per-click links that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. 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). The Panel finds that Respondent has no rights or legitimate interests in the <libertymutual-com.com> domain name due to its inability to show a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of iCANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant next contends that Respondent registered and is using the
<libertymutual-com.com> domain name in bad faith. Complainant states that Respondent’s disputed domain name resolves to a website displaying links to third-party businesses that compete with Complainant for insurance quotes. The Panel notes the screenshot provided by Complainant to see Respondent’s use of the disputed domain name contains links to other sites, some of which links feature “Auto Insurance,” “Liability Insurance,’ “Student Health Insurance,” “Insurance,” “Workers Compensation,” “Life Insurance,” and “Medicare.” Panels have previously found bad faith use and registration under Policy ¶ 4(b)(iii) when a respondent uses a domain name to provide links that compete with a complainant. Panels have also concluded that this type of use disrupts a complainant’s legitimate business by diverting Internet users away from a complainant’s official website and to respondent’s. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel therefore finds that Respondent registered and is using the <libertymutual-com.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant also asserts that Respondent uses complainant’s mark to attract Internet users to Respondent’s website for commercial gain. Complainant asserts that Respondent’s use of Complainant’s registered mark causes confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant additionally argues that Respondent’s resolving website displays Complainant’s mark along with pay-per-click links that redirect Internet users to third-party websites that compete with Complainant. Panels have concluded that using a confusingly similar domain name to attract Internet users to a website for commercial gain by creating a likelihood of confusion is evidence of 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).”). The Panel thus finds that Respondent registered and is using the <libertymutual-com.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions relative to 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 <libertymutual-com.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 1 2014
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