New York Life Insurance Company v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1706001737172
Complainant is New York Life Insurance Company (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nylifeinvestments.com>, registered with Internet Domain Service BS Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2017; the Forum received payment on June 29, 2017.
On June 27, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <nylifeinvestments.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 June 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2017 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@nylifeinvestments.com. Also on June 30, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. 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
1. Complainant is a large mutual life-insurance company founded in 1845. Complainant uses the NYLIFE mark to promote its goods and services. Complainant has rights in the NYLIFE mark due to its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,481,871, registered Mar. 22, 1988). Respondent’s <nylifeinvestments.com>[1] domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive term “investments” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
2. Respondent does not have rights or legitimate interests in the domain name. Complainant has not licensed or otherwise authorized Respondent to use its NYLIFE mark in any fashion and Respondent is not commonly known by the <nylifeinvestments.com> domain name.
3. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). Instead, Respondent uses the domain name to display hyperlinks that compete with Complainant’s business.
4. Respondent has registered and is using the <nylifeinvestments.com> domain name in bad faith. Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the NYLIFE mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by displaying competing hyperlinks. Respondent had actual knowledge of Complainant’s rights in the NYLIFE mark is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NYLIFE mark. Respondent’s domain name is confusingly similar to Complainant’s NYLIFE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <nylifeinvestments.com> domain name and that Respondent registered and uses the 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 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(f), 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 (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.”).
Complainant registered its NYLIFE mark with the USPTO (e.g. Reg. No. 1,481,871, registered Mar. 22, 1988), and has rights in the mark under Policy ¶ 4(a)(i). Registration with a trademark authority such as the USPTO confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Next, Complainant argues Respondent’s <nylifeinvestments.com> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive term “investments” and the gTLD “.com” to the fully incorporated mark. Addition of descriptive terms and gTLD to a mark in which a complainant has rights to a domain name does not remove the domain name from the realm of confusing similarity per Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (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.”). The Panel therefore finds that the <nylifeinvestments.com> domain name is confusingly similar to Complainant’s NYLIFE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <nylifeinvestments.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <nylifeinvestments.com> domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its NYLIFE mark in any fashion. There is nothing in the record to contradict Complainant’s statement. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially where a privacy service has been engaged. Respondent engaged a privacy service and the WHOIS information of record lists “DOMAIN ADMIN.” Therefore, the Panel holds that Respondent is not commonly known by <nylifeinvestments.com> per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the <nylifeinvestments.com> domain name because Respondent uses the website solely to generate commissions through the use of pay-per-click advertisements. Use of a domain name under the circumstances of this case to resolve to a web page containing advertising links to products that compete with those of a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Here, Complainant has provided screenshots of Respondent’s webpage which displays links to “Retirement Investments,” “Investments Funds,” and “Pension Investments.” Upon clicking the links, Internet users are led to Complainant’s competitor’s websites. Therefore, the Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <nylifeinvestments.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the NYLIFE mark. Use of a domain name which contains a mark to which a complainant has rights to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. . . . Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”) Here, Complainant has provided screenshot evidence of the <nylifeinvestments.com> domain name resolving website which displays links to services and products that compete directly with Complainant. Therefore, the Panel concludes that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s NYLIFE mark, it is inconceivable that Respondent could have registered the <nylifeinvestments.com> domain name without actual knowledge of Complainant’s rights in the mark. Actual knowledge of the Complainant's rights in the NYLIFE mark prior to registering the <nylifeinvestments.com> domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Here, Complainant’s NYLIFE mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1845. Therefore, it is apparent to the Panel that Respondent had actual knowledge of Complainant’s rights when <nylifeinvestments.com> was registered and subsequently used.
The Panel finds 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 <nylifeinvestments.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 27, 2017
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