Fidelity Life Association v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1901001825071
Complainant is Fidelity Life Association (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fidelitylifeinsurance.com>, registered with Media Elite Holdings Limited.
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 Forum electronically on January 15, 2019; the Forum received payment on January 15, 2019.
On January 16, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <fidelitylifeinsurance.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 January 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2019 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@fidelitylifeinsurance.com. Also on January 21, 2019, 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 February 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since 1930, Complainant, operating under the FIDELITY LIFE mark, has continuously marketed life insurance policies to individuals and families.
Complainant has rights in the FIDELITY LIFE mark under the common law.
Complainant has promoted its FIDELITY LIFE insurance products through its official <fidelitylife.com> website since 2007.
Respondent registered the domain name <fidelitylifeinsurance.com> on or about April 24, 2008.
The domain name is confusingly similar to Complainant’s FIDELITY LIFE mark.
Respondent is not licensed or otherwise permitted by Complainant to use Complainant’s FIDELITY LIFE mark.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Respondent uses the domain name to divert Internet users to the website resolving from the domain name, at which Respondent hosts pay-per-click advertisements which compete with Complainant’s business, and from the operation of which Respondent obtains revenue in the form of click-through fees.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the FIDELITY LIFE mark when registering the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Registration of a mark with a national trademark authority is enough to establish rights in a mark for purposes of Policy ¶ 4(a)(i), but such registration is not necessary for that purpose. This is because common law rights in a mark are also sufficient to establish standing for a UDRP complainant under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark).
In the case before us, Complainant has adequately demonstrated rights in the FIDELITY LIFE mark under the common law from its long and continuous use in commerce, beginning in 1930, including its use in the <fidelitylife.com> domain name, as detailed in the Complaint. Complainant has therefore satisfied the standing requirements of Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <fidelitylifeinsurance.com> domain name is confusingly similar to Complainant’s FIDELITY LIFE mark. The domain name contains the mark in its entirety, with only the addition of the term “insurance,” which describes Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic phrase and a gTLD, the differences between the domain name and the mark being insufficient to distinguish one from the other for purposes of the Policy).
See also Eastman Chem. Co. v. Patel, FA 524752 (Forum September 7, 2005):
[T]he addition of a term descriptive of Complainant’s business ... and the addition of the gTLD ‘.com’ [to the mark of a UDRP complainant in forming a domain name] are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
As to the latter point, this is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the domain name <fidelitylifeinsurance.com>, 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 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made 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 December 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 they are 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) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged domain name, <fidelitylifeinsurance.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the FIDELITY LIFE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Administrator / Fundacion Privacy,” 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 ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent employs the <fidelitylifeinsurance.com> domain name to divert Internet users to a resolving website, at which Respondent hosts pay-per-click advertisements that compete with Complainant’s business, and from the operation of which Respondent obtains revenue in the form of click-through fees.
This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) (finding that a respondent failed to show that its use of a contested domain name constituted a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii), where that respondent used the domain name to host a web page featuring links to services that competed with those of a UDRP complainant). See also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017):
Respondent’s use of … [a disputed domain name] … also does not qualify as a bona fide offering…. [T]he … domain name resolves to a site containing pay-per-click hyperlinks and advertisements…. Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <fidelitylifeinsurance.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018):
Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the … domain name pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent employs the <fidelitylifeinsurance.com> domain name, which we have found to be confusingly similar to Complainant’s FIDELITY LIFE mark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too illustrates Respondent’s bad faith in registering and using the domain name.
See Google Inc. v. James Lucas / FireStudio, FA1605757 (Forum April 7, 2015):
This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant, and of its rights in the FIDELITY LIFE mark, when registering the disputed <fidelitylifeinsurance.com> domain name. This further demonstrates Respondent’s bad faith in registering that domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s … mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complaint 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 <fidelitylifeinsurance.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 18, 2019
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