Allstate Insurance Company v. Soly Vargas
Claim Number: FA1404001552512
Complainant is Allstate Insurance Company (“Complainant”), represented by Jamison B. Arterton of Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, P.C., Massachusetts, USA. Respondent is Soly Vargas (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youreingoodhands.org>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 3, 2014; the National Arbitration Forum received payment on April 4, 2014.
On April 4, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration For-um that the <youreingoodhands.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has veri-fied that Respondent is bound by the eNom, Inc. 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 April 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2014 by which Re-spondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and bil-ling contacts, and to postmaster@youreingoodhands.org. Also on April 9, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 May 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant is a personal lines insurer that has used the YOU’RE IN GOOD HANDS mark continuously since at least 1958.
Complainant holds a registration for the YOU’RE IN GOOD HANDS service mark, on file with the United States Patent and Trademark Office (“USPTO”) (as Registry No. 671,339, registered Dec. 16, 1958; and renewed as Registry No. 3,023,784, registered December 6, 2005).
Respondent registered the <youreingoodhands.org> domain name on or about September 29, 2013.
That domain name is confusingly similar to Complainant’s YOU’RE IN GOOD HANDS mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not authorized Respondent to use the YOU'RE IN GOOD HANDS trademark, or any variation thereof, in the domain name.
Respondent is not making a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the disputed domain name.
Respondent has failed to make an active use of the disputed domain name.
Respondent has no rights to or legitimate interests in that domain name.
Respondent knew of Complainant and its rights in the YOU’RE IN GOOD HANDS mark when it registered the domain name.
Respondent registered and uses the contested domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the YOU’RE IN GOOD HANDS service mark for pur-poses of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where a UDRP complainant submitted evidence of its registration of a mark with the USPTO, “such evidence estab-lishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <youreingoodhands.org> domain name is confusingly similar to Complainant’s YOU’RE IN GOOD HANDS service mark. The domain name wholly incorporates Complainant’s YOU’RE IN GOOD HANDS mark, merely eliminating an apostrophe and the spaces between the terms of the mark and adding the generic To Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of identity or confusing similarity under the standards of the Pol-icy. See, for example, Citizens Financial Group, Inc. v. Albert Kao, FA 1030868 (Nat. Arb. Forum August 21, 2007) (finding that the addition of the gTLD “.org” to the mark of another in creating a domain name does nothing to alleviate the re-sulting confusing similarity between them because a gTLD is required for all domain names).
See also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Start-ups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe from the mark of a UDRP complainant in forming a domain name did not significantly distinguish the resulting domain name from the mark under Pol-icy ¶ 4(a)(i)).
Further see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that neither the elimination of spaces between the terms of a UDRP complainant’s mark nor the addition of a gTLD to the same mark in creating a domain name established distinctiveness between the domain name and the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <youreingoodhands.org> domain name, and that Complainant has not authorized Respondent to use its YOU'RE IN GOOD HANDS service mark, or any variation thereof, in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Soly Vargas,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information identified the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” rather than as any of the domain names, and where there was no other evidence in the rec-ord to suggest that that respondent was commonly known by any of the domain names there in dispute).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, and so has failed to demonstrate that it has rights to or legitimate interests in the domain name as provided in Policy ¶¶ 4(c)(i) or 4(c)(iii) in that Respondent has failed, from the time of its registration, to make any active use of it. In the circumstanc-es here presented, we conclude that Respondent’s failure to make any active use of the disputed domain name from the time of its registration establishes that Respondent is not making a bona fide offering of goods or services via the do-main name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests in contested domain names where a respondent made no active use of them).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
In examining the question of bad faith under Policy ¶ 4(a)(iii), we are not confined to the considerations set out in Policy ¶ 4(b), but may look to the totality of the cir-cumstances presented in the record before us. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy are not an exhaustive list of evidence of bad faith in the registration and use of a domain name); see also Home Interiors & Gifts, Inc. v. Home Inter-iors, D2000-0010 (WIPO Mar. 7, 2000):
[J]ust because Respondent’s conduct does not fall within the ‘par-ticular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.
With this in mind, we turn to the issue of bad faith as outlined in the Complaint.
It may be said in the first instance that Respondent’s failure to make any active use of the <youreingoodhands.org> domain name from the time of its registra-tion is itself evidence of bad faith in its registration and use. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding, under Policy ¶ 4(a)(iii), that a respondent made no use of the domain name or of the website that connected with the do-main name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Moreover, it is plain from the record that Respondent knew of Complainant and its rights in the YOU'RE IN GOOD HANDS service mark at the time it created the <youreingoodhands.org> domain name. This is independent evidence of Re-spondent’s bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name under ¶ 4(a)(iii) where a respondent was "well-aware of” a UDRP complainant's mark at the time of registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <youreingoodhands.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 7, 2014
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