Ace Limited v. Chen Huang
Claim
Number: FA0501000399568
Complainant is ACE Limited (“Complainant”),
represented by Alfred W Zaher, of Woodcock, Washburn LLP,
One Liberty Place, 46th Floor, Philadelphia, PA 19103. Respondent is Chen Huang (“Respondent”),
P.O. Box 20231, Zengdu, Guangzhou 34264, China 65487.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aceinsurancecompany.com>, registered with
iHoldings.com, Inc. d/b/a dotregistrar.com.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
January 10, 2005; the National Arbitration Forum received a hard copy of the
Complaint on January 12, 2005.
On
January 18, 2005, iHoldings.com, Inc. d/b/a dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <aceinsurancecompany.com>
is registered with iHoldings.com, Inc. d/b/a dotregistrar.com and that
Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a dotregistrar.com has verified that
Respondent is bound by the iHoldings.com, Inc. d/b/a dotregistrar.com
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
January 18, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 7, 2005 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@aceinsurancecompany.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
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." 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 makes the following assertions:
1. Respondent’s <aceinsurancecompany.com>
domain name is confusingly similar to Complainant’s ACE mark.
2. Respondent does not have any rights or
legitimate interests in the <aceinsurancecompany.com> domain name.
3. Respondent registered and used the <aceinsurancecompany.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, ACE
Limited, the Bermuda based holding company of the ACE Group of Companies, began
international use in commerce of the ACE mark for insurance services at least
as early as 1985. Through the ACE Group
of Companies, Complainant currently provides a broad range of insurance and
reinsurance products under the ACE mark to “insureds” worldwide through its
operations in the U.S. and almost 50 other countries.
Complainant has
used the ACE mark since 1985. It
registered the ACE mark on November 4, 2003 (Reg. No. 2,778,828) with the U.S.
Patent and Trademark Office (“USPTO”) for property and casualty insurance. It subsequently registered ACE ADVANTAGE and
ACE RISK MANAGEMENT (Reg. Nos. 2,106,692 and 2,879,938) on October 21, 1997 and
August 31, 2004, respectively.
In 2003,
Complainant wrote $14,637 million (U.S.) in gross insurance premiums, had over
8,900 employees worldwide, and held $49.5 billion in total assets.
Respondent, Chen
Huang, registered <aceinsurancecompany.com> on October 15,
2004. Respondent is using the disputed
domain name to divert Internet users to a website that features a search engine
and links to various insurance websites, some of which are in competition with the
products and services offered by Complainant under its ACE marks.
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.
The Panel finds
that Complainant has rights in the ACE mark as evidenced by its registration of
the ACE mark with the USPTO. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive, and the tespondent has the burden of refuting this assumption).
Respondent’s <aceinsurancecompany.com>
domain name is confusingly similar to Complainant’s ACE mark because it
merely adds the descriptive words “insurance” and “company,” which does not
significantly distinguish the domain name from the mark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept.
14, 2000) (finding that combining the generic word “shop” with the
complainant’s registered mark “llbean” does not circumvent the complainant’s
rights in the mark nor avoid the confusing similarity aspect of the ICANN
Policy); see also Marriott Int’l,
Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding
that the respondent’s domain name <marriott-hotel.com> is confusingly
similar to the complainant’s MARRIOTT mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. Therefore, the
Panel accepts any reasonable assertion in the Complaint as true. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”).
Respondent is
appropriating Complainant’s mark to lead Internet users to Complainant’s
competitors. The Panel finds that
appropriating another’s mark in a domain name to lead Internet traffic to the
mark holder’s competitors is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name
to redirect Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also
Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant,
had no rights or legitimate interests in a domain name that utilized
Complainant’s mark for its competing website).
There is nothing
in the record, including the WHOIS domain name registration information, which
indicates that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that
Respondent is not commonly known by the disputed domain name pursuant to 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
The Panel infers
that Respondent uses the domain name to generate revenues through click-through
referral fees. The Panel finds that
registering a domain names that is identical or confusingly similar to
Complainant’s mark to create confusion for commercial gain is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain); see also
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Respondent is
appropriating Complainant’s mark in the disputed domain name to promote
Complainant’s competitors. The Panel
finds that Respondent registered the <aceinsurancecompany.com> domain
name to disrupt Complainant’s business, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered
and used the domain name <eebay.com> in bad faith where Respondent has
used the domain name to promote competing auction sites); see also Hewlett Packard Co. v. Full Sys., FA
94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and
used the domain name primarily for the purpose of disrupting the business of
Complainant by offering personal e-mail accounts under the domain name
<openmail.com> which is identical to Complainant’s services under the
OPENMAIL mark).
The Panel finds
that Complainant has established 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 <aceinsurancecompany.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 1, 2005
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