WorldClaim Global Claims Management v. Bishop, Atticus / Bishop
Claim Number: FA1609001694577
Complainant is WorldClaim Global Claims Management (“Complainant”), New York, USA. Respondent is Bishop, Atticus / Bishop (“Respondent”), represented by Mark B. Saku of Mark Saku Law PLLC, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldclaim.com>, registered with Network Solutions, Llc.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2016; the Forum received payment on September 20, 2016.
On September 22, 2016, Network Solutions, Llc confirmed by e-mail to the Forum that the <worldclaim.com> domain name is registered with Network Solutions, Llc and that Respondent is the current registrant of the name. Network Solutions, Llc has verified that Respondent is bound by the Network Solutions, Llc 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 September 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2016 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 firstname.lastname@example.org. Also on September 26, 2016, 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.
A timely Response was received and determined to be complete on October 21, 2016.
On October 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant has rights in the WORLDCLAIM mark due to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,286,913, registered Aug. 28, 2007). See Compl. at Attached Annex. Complainant operates as a public insurance adjusting firm that manages insurance claims for policyholders. The disputed domain name is exactly similar to Complainant’s mark.
The WHOIS information shows that the disputed domain name is registered to a URL of <lamedelegation.net>, which is under construction, and therefore the disputed domain name is seemingly a chain of cybersquatters. Further, it redirects users to links that are unrelated to the business model of Complainant, but within the same industry, and has done so for over 10 years. The disputed domain name redirects Internets users to insurance companies.
Respondent used the disputed domain name in bad faith because it has been parked for over ten years.
Respondent`s contentions are as follows:
Respondent concedes that the disputed domain name is identical to Complainant’s WORLDCLAIM mark.
Respondent has used the disputed domain name with a bona fide offering of goods or services. Respondent is a licensed personal injury attorney and an active member of the Washington State Bar Association in good standing since 1993. In 1999/2000, Respondent and his associates purchased several domains in connection with a business model for the online dispute resolution of insurance claims (ODR or ODRC).
Claimant asserts as their primary basis of claim that while Respondent has owned the Domain for over 10 years, Respondent’s site is currently under construction. Contrary to this false assumption, Respondent has remained in active use of all its domains.
Respondent’s company began as “settlementnow.com,” later switching to “allsettle.com” in the year 2000. See Compl. at Attached Ex. A. Anticipating market saturation, and in an effort to create a successful online business, Respondent purchased several domains related to ODR, including the disputed domain name. See Compl. at Attached Ex. B. All domain purchases were made with the sole purpose of housing content and routing users to Respondent’s website, as well as increasing asset value of the company. Respondent’s primary purpose and use has always been the development of its domain names as a company asset, and in connection with its business purpose, business model and Respondent’s ODR/ODRC customers in the bona fide offering of goods.
Respondent recently decided to briefly suspend its online business operations until the expiry of certain patents held by its competitors. During the past decade, however, Respondent has remained actively seeking investment and partnership in its business venture. Respondent plans to continue using the disputed domain name, with the expectation to restart business operations after certain patent protections lapse, (which it anticipates in the following few years).
Claimant’s law firm, the same firm with the Attorney of Record having registered the Mark with the USPTO, attempted to purchase the disputed domain name from Respondent in 2005. See Resp., at Attached Ex. C. By declining to enter into this transaction, Respondent was exercising its ownership rights.
Policy ¶ 4(a)(iii) requires both registration AND use in bad faith. Respondent registered the disputed domain name in 1999 with no knowledge of any other company by the same name, four years prior to Complainant filing for registration of WORLDCLAIM with the USPTO. Further, the disputed domain name is comprised of two words that are utilized for their generic or descriptive value.
Lastly, Complainant has engaged in reverse domain name hijacking by initiating this dispute.
Claims Consultants International LLC owns the following US trademark registration:
WORLDCLAIM, Registration No. 3286913, Registration Date August 28, 2007, filed on July 29, 2005, covering Claims Adjustment in the Field of Insurance; and Insurance Claims Consultation Services in Relation Thereto, in International Class 36. First Use / First use in commerce: July 27, 2005.
Respondent registered the disputed domain name on November 5, 1999.
Rules ¶ 15(a) 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."
Policy ¶ 4(a) 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.
Policy ¶ 4(a)(i) requires that the complainant in these proceedings prove that it has rights in a mark, and that the disputed domain name be identical or confusingly similar to such mark.
Respondent has conceded that the disputed domain name is identical to the WORDCLAIM mark, but has not conceded that Complainant has rights in such mark. The Panel notes that according to the TESS database of the USPTO, the owner (registrant) of the WORLDCLAIM service mark Reg. No. 3286913 is “Claims Consultants International LLC LIMITED LIABILITY COMPANY”, of NEW YORK 3512 Rosendale Rd. Niskayuna NEW YORK 12309. The Panel also notes that Complainant has identified itself as “WorldClaim Global Claims Management”, with address at 3512 Rosendale Road, Niskayuna, NY 12309. Although Complainant`s address appears to be the same as the owner / registrant’s of the WORLDCLAIM service mark, the name of Complainant does not coincide with the name of the service mark`s owner. In absence of any evidence that the trademark owner is doing business under Complainant`s name, or that it has changed its name into Complainant`s, or that the mark has been licensed, transferred or assigned to Complainant, or that Complainant is the parent company of the trademark owner, or that Complainant is a corporate successor of the mark owner, or that the trademark holder has licensed or authorized Complainant to the bringing of the present claim, etcetera, the Panel cannot find that Complainant has rights in the WORLDCLAIM mark. See Telcel, C.A. v. jerm and Jhonattan Ramírez, D2002-0309 (WIPO Jun. 5, 2002). In a previous case, the Panel has issued a procedural order requesting the complainant to provide evidence of its rights in a trademark whose owner of record was another company. See, e.g., Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc., D2003-1027 (WIPO Mar. 10, 2004). However, the Panel believes that issuing such an order in the present case would be pointless: even if Complainant were able to prove rights in the WORLDCLAIM mark, it has failed to prove registration in bad faith. See below. Thus, there is no need to delve further into the issue of rights in the mark.
Rights or Legitimate Interests
As seen below, Complainant has failed to prove registration in bad faith. Since a complainant must prove all three requirements of the Policy, the Panel need not address the issue of rights and legitimate interests. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as Complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Registration and Use in Bad Faith
Under Policy ¶ 4(a), Complainant must prove that the disputed domain name has been registered and is being used in bad faith. In turn, registration in bad faith presupposes that the respondent knew of, and targeted, the complainant and its mark at the time of registering the disputed domain name.
Complainant does not contend that Respondent knew of the WORLDCLAIM mark, or targeted it, at the time of registration. For its part, Respondent does contend that in 1999 it registered the disputed domain name with no knowledge of Complainant or of any other company by the same name. Respondent adds that it registered the disputed domain name over four years prior to Complainant filing registration of the WORLDCLAIM mark with the USPTO, i.e. when the mark did not even exist. Response, (3), IV.
The Panel agrees with Respondent. According to the date of creation of the record for the disputed domain name on the WhoIs database of the Registrar, Network Solutions, LLC, Respondent registered the disputed domain name on November 5, 1999. Also, Notice No. 45778366 sent by VeriSign, Inc. to the registrant of the disputed domain name, Atticus Bishop, i.e., Respondent, states that the registration fee for the disputed domain name has been paid, covering the time period between November 5, 2001 and November 5, 2010. Response Exhibit B.
The Panel also notes that the WORLDCLAIM service mark, US Registration No. 3286913, was registered on August 28, 2007, and was filed on July 29, 2005. The service mark registration states that the date of first use and first use in commerce was July 27, 2005. Thus, the registration of the disputed domain name by Respondent predates not only the registration and filing of the mark, but also the date of first use and first use in commerce by over five years.
The Panel is aware that in these proceedings a complainant may prove rights in an unregistered, common law mark, but one would need very compelling evidence to show that the combination of two descriptive words such as “world” and “claim” had become a common law mark by November 5, 1999. However, Complainant has not made any contention, or provided any evidence that any WORLDCLAIM common law mark existed at the time of the registration of the disputed domain name.
Therefore, the Panel concludes that Complainant failed to prove registration in bad faith. See Wave59 Technologies Int'l Inc. v. VolumeDomains.com, FA 1413550 (Nat. Arb. Forum Nov. 30, 2011) (“A finding of bad faith registration requires proof that Respondent was aware of Complainant or its mark when it registered the domain name, and that the registration was in some way targeted at Complainant or its mark. See, e.g., HotCam, Ltd. v. RNIS Telecommunication inc., FA 1273417 (Nat. Arb. Forum Aug. 24, 2009); Carboni v. Domain Admin, eSources Comm’ns, D2008-0970 (WIPO Sept. 2, 2008). Yet according to the Complaint, Complainant did not begin using its W59 mark until several years after Respondent registered the disputed domain name. “)
Reverse Domain Name Hijacking
In the Panel`s opinion, after a simple comparison of dates it must have been evident to Complainant that Respondent had registered the disputed domain name over five years before the filing of the application for the WORLDCLAIM service mark, and also before the date of first use and first use in commerce of the mark, as stated by the registrant of this mark. In other words, Complainant must have been aware that Respondent could not have had the WORLDCLAIM mark in mind at the time of registering the disputed domain name, and therefore, that Respondent had not registered the disputed domain name in bad faith. In the Panel`s view, bringing a UDRP complaint with such awareness is an abuse of the proceedings. Therefore, the Panel finds that Complainant has attempted at Reverse Domain Name Hijacking pursuant to Rules ¶¶ 1 and 15(e)
Complainant has not established all three elements required under the ICANN Policy. Therefore, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <worldclaim.com> domain name REMAIN WITH Respondent.
In addition, the Panel finds that Complainant has attempted at Reverse Domain Name Hijacking.
Roberto A. Bianchi, Panelist
Dated: November 7, 2016
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