Hagerty Insurance Agency, Inc. v. LaPorte
Holdings, Inc.
Claim Number: FA0501000400472
Complainant is Hagerty Insurance Agency, Inc. (“Complainant”),
represented by Michael J. Daray, of Dingeman, Dancer and Christopherson, PLC,
100 Park Street, Traverse City, MI 49684.
Respondent is LaPorte Holdings
Inc. (“Respondent”), c/o Nameking.com, Inc., 2202 S. Figueroa St. Suite
721, Los Angeles, CA 90023.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hagertyinsurancecompany.com>,
registered with Nameking.com, 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
January 12, 2005; the National Arbitration Forum received a hard copy of the
Complaint on January 12, 2005.
On
January 12, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hagertyinsurancecompany.com>
is registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, 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
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@hagertyinsurancecompany.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 17, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Judge Harold Kalina (Ret.)
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 <hagertyinsurancecompany.com> domain name is confusingly
similar to Complainant’s HAGERTY mark.
2. Respondent does not have any rights or
legitimate interests in the <hagertyinsurancecompany.com>
domain name.
3. Respondent registered and used the <hagertyinsurancecompany.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Hagerty Insurance Agency, Inc., is a U.S. nation-wide insurance agency that
specializes in the sale of classic and collector car insurance products, and
related services. Complainant
registered the HAGERTY mark (Reg. No. 2,814,153) with the United States Patent
and Trademark Office (“USPTO”) on February 10, 2004. Additionally, Complainant registered the HAGERTY CLASSIC
INSURANCE mark (Reg. No. 2,414,043) on December 19, 2000.
Respondent,
LaPorte Holdings, Inc., registered the <hagertyinsurancecompany.com>
domain name on September 29, 2004.
The disputed domain name resolves to a search engine that provides links
to goods and services related to the term “hagerty,” including home furnishings,
linens, garden products, books, search services, and classic car
insurance. For instance, one such link
reads “Buy Books By Hagerty At Barnes & Noble?” The others offer similar “hagerty” goods and services.
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 HAGERTY and HAGERTY CLASSIC INSURANCE marks
as evidenced by its registration of the marks 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 Respondent has the burden of refuting this
assumption).
The Panel finds
that Respondent’s <hagertyinsurancecompany.com>
domain name is confusingly similar to Complainant’s HAGERTY mark because
the only difference is the addition of the descriptive words “insurance” and
“company,” which do not significantly distinguish the domain name from the
mark. The Panel also finds that
Respondent’s <hagertyinsurancecompany.com>
domain name is confusingly similar to Complainant’s HAGERTY CLASSIC
INSURANCE mark because the only difference is the omission of the word
“classic” and the addition of the word “company,” which does not significantly
distinguish the domain name from the mark.
See Space
Imaging LLC v. Brownell, 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 PG&E Corp. v.
Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does
not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and
‘2000’ following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”); see also Christie’s Inc.
v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding
that the domain name
<christiesauction.com> is confusingly similar to Complainant's
mark since it merely adds the word "auction" used in its generic
sense).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. Therefore, the
Panel may accept 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 Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is
appropriating Complainant’s marks to provide a website that lists search engine
results with links that are related to the term “Hagerty,” including
Complainant’s competitors. On its face,
providing links to “Hagerty” linens, for instance, does not seem to impinge on
the goodwill of Complainant—a specialty insurance company. However, the Panel assumes that Complainant
is receiving “click-through fees” for directing traffic to these on-line
businesses. In addition, there is one
link to a direct competitor of Complainant.
Either way, the Panel finds that appropriating another’s mark to generate
click-through fees or 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 Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27,
2002) (finding that Respondent’s use of a confusingly similar domain name to
operate a pay-per-click search engine, in competition 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 used the disputed domain name to generate revenues through
click-through referral fees. The Panel
finds that registering domain names that are identical or confusingly similar to
Complainant’s marks 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 to promote Complainant’s competitors. The disputed domain name resolves to a
website that provides links for classic and collectable car insurance. The Panel finds that Respondent registered
the <hagertyinsurancecompany.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 the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent 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 the respondent registered and used the domain name
primarily for the purpose of disrupting the business of the complainant by
offering personal e-mail accounts under the domain name <openmail.com>
which is identical to the 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 <hagertyinsurancecompany.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
March 3, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum