American International Group, Inc.
v. Richard Mandanice
Claim Number: FA0305000159401
Complainant is American International Group, Inc.,
New York, NY (“Complainant”) represented by Claudia Werner
Stangle. Respondent is Richard Mandanice, Delson, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landmark-insure.com>,
registered with Enom, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum (the "Forum") electronically on May 23, 2003; the
Forum received a hard copy of the Complaint on May 27, 2003.
On May 28, 2003, Enom, Inc. confirmed by e-mail to the
Forum that the domain name <landmark-insure.com> is registered
with Enom, Inc. and that Respondent is the current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On May 30, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 19, 2003 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@landmark-insure.com by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification, the Forum transmitted to the parties a Notification of Respondent
Default.
On June 26, 2003, pursuant to Complainant's request to
have the dispute decided by a single-member Panel, the Forum appointed
Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the
Administrative Panel (the "Panel") finds that the 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 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 <landmark-insure.com>
domain name is confusingly similar to Complainant’s LANDMARK mark.
2.
Respondent does not have
any rights or legitimate interests in the <landmark-insure.com>
domain name.
3.
Respondent registered
and used the <landmark-insure.com> domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., and
its predecessors in interest have used the LANDMARK mark in connection with
insurance services since 1978. On March 7, 1989, the LANDMARK mark was
registered on the Principal Register of the U.S. Patent and Trademark Office
(U.S. Reg. No. 1,528,657) covering the underwriting of property/casualty
insurance and health insurance. Complainant also holds registrations for the
LANDMARK mark in the United Kingdom (Reg. No. B1,406,719) and in the European
Community (Reg. No. 91264).
Respondent, Richard Mandanice, registered the <landmark-insure.com>
domain name on April 20, 2003, and is not licensed or authorized to use
Complainant’s LANDMARK mark for any purpose. By May 20, 2003, Respondent was
hosting an adult-oriented website entitled “Tina’s Free Live Cam.” Any attempt
by Internet users to close their web browser upon reaching this website would
launch an additional window displaying a “pop-up” advertisement, inviting
Internet users to explore how to see Tina naked “without giving out your credit
card number.”
The Panel notes that Respondent has been hailed before
previous administrative Panels for alleged cybersquatting behavior in the past.
In each decision, the disputed domain name was transferred to Complainant. See
Carrefour v. Richard Mandanice, D2002-0623 (WIPO Sept. 12, 2002); The
Dream Merchant Co. Kft. and Creations Meadres Inc. v. Richard Mandanice d/b/a
Domain Strategy Inc., FA 137097 (Nat. Arb. Forum Jan. 23, 2003); Florists’
Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat.
Arb. Forum June 27, 2002).
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.
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 has established rights in the LANDMARK
mark through registration of the mark on the Principal Register of the U.S.
Patent and Trademark Office, registration of the mark with the appropriate
governmental authorities abroad, and through continuous use and promotion of
the mark in commerce since 1978.
Respondent’s <landmark-insure.com> domain
name is confusingly similar to Complainant’s LANDMARK mark. The disputed domain
name entirely appropriates Complainant’s LANDMARK mark with the addition of the
word “insure.” The word “insure” describes the type of business that
Complainant conducts under the LANDMARK mark, meaning the addition of this word
operates to increase the confusing similarity between Complainant’s arguably
generic mark and the domain name. See Space Imaging LLC v. Brownwell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where
Respondent’s domain name combines Complainant’s mark with a generic term that
has an obvious relationship to Complainant’s business); see also Brambles
Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as Geelong City Motors,
D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name
<bramblesequipment.com> is confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies that there is an association with Complainant’s business).
Accordingly, the Panel finds that the <landmark-insure.com>
domain name is confusingly similar to Complainant’s LANDMARK mark under
Policy ¶ 4(a)(i).
Respondent is using a confusingly similar variation of
Complainant’s mark to subject Internet users to adult-oriented material. While
Complainant’s LANDMARK mark is arguably generic, the addition of the word
“insure” to the mark makes it apparent that Respondent is attempting to benefit
from the goodwill surrounding Complainant’s mark with its registration of the
disputed domain name. In using Complainant’s mark to profit off of misdirected
Internet users, Respondent is making neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use of the domain name under Policy ¶ 4(c)(iii). See Brown & Bigelow,
Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that
infringing on another's well-known mark to provide a link to a pornographic
site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11,
2000) (finding that it is not a bona fide offering of goods or services to use
a domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material where such use is
calculated to mislead consumers and to tarnish Complainant’s mark).
Respondent has already had several claims brought
against it under the UDRP. In each of those cases, the disputed domain name was
transferred to the appropriate Complainant. In light of the fact that
Respondent appears to be a serial cybersquatter, and that there is no evidence
before the Panel to indicate otherwise, the Panel finds that Respondent is not
“commonly known by” the disputed domain name for the purposes of Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb.
10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that Respondent does not
have rights or legitimate interests in the <landmark-insure.com> domain
name under Policy ¶ 4(a)(ii).
Respondent registered and used the disputed <landmark-insure.com>
domain name in bad faith. Given the fact that Respondent registered a
domain name which not only incorporates Complainant’s registered mark, but also
includes a word that perfectly describes Complainant’s commercial activities
under that mark, the Panel inferrs that Respondent deliberately registered a
domain name that created a likelihood of confusion as to the source or
sponsorship of the resultant website. Respondent then used its abusive
registration to host an adult oriented website. Such use not only brings
Respondent commercial gain, but tarnishes Complainant’s mark. These
circumstances are evidence that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Reuters Ltd. v.
Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
mark when registering the domain name as well as aware of the deception and
confusion that would inevitably follow if it used the domain name); see also
Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that
absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc.
v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association
with a pornographic web site can itself constitute bad faith”).
The Panel thus finds that Respondent registered and
used the <landmark-insure.com> domain name in bad faith, and that
Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landmark-insure.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: July 11, 2003
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