Fortis SA/NV and Fortis NV v. LaPorte
Holdings, Inc.
Claim
Number: FA0503000434269
Complainant is Fortis SA/NV and Fortis NV (collectively,
“Complainant”) represented by Marsha
Stolt of Moss and Barnett, P.A., 90 So. Seventh St., 4800 Wells Fargo
Center, Minneapolis, MN, 55402-4129.
Respondent is LaPorte Holdings,
Inc. (“Respondent”) 2202 S.
Figueroa Street, Suite 721, Los Angeles, CA, 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fortisbenifitsdental.com>, registered
with Nameking.com, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically March 3,
2005; the National Arbitration Forum received a hard copy of the Complaint March
4, 2005.
On
March 10, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <fortisbenifitsdental.com>
is registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. verified that Respondent is bound by
the Nameking.com, Inc. registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
March 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 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@fortisbenifitsdental.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
April 8, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <fortisbenifitsdental.com>, is confusingly similar to
Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark.
2. Respondent has no rights to or legitimate
interests in the <fortisbenifitsdental.com> domain name.
3. Respondent registered and used the <fortisbenifitsdental.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Fortis SA/NV and Complainant, Fortis NV are joint Parent Companies of a group
of international companies. These two entities will be collectively referred to
as “Complainant.” Complainaint and its numerous affiliated entities are among
the largest providers of financial business and insurance services, including
insurance, annuities, cash and asset management services, and employee benefits
and pension plan management. Many of Complainant’s most well known insurance
packages are offered by their subsidiary, the Fortis Benefits Insurance
Company.
Complainant
holds a registration with the United States Patent and Trademark Office for the
FORTIS BENEFITS INSURANCE COMPANY mark (Reg. No. 2,593,554 issued July 16,
2002).
Respondent
registered the <fortisbenifitsdental.com> domain name October 15,
2003. The disputed domain name resolves to an Internet search engine devoted to
a wide variety of content, including insurance and Internet gambling. Respondent’s
domain name contains “popular links” that take Internet users to pages of
Respondent’s website that provide links to third-party websites where users can
purchase competing dental insurance, find local medical providers, check rates
for competing health care coverage, join weight loss programs, learn about
alternative medicines, and enroll in career guidance programs. The disputed
domain name also hosts links to various other Internet sites, including
numerous Internet casinos.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established with extrinsic proof in this proceeding that it has rights in the
FORTIS BENEFITS INSURANCE COMPANY mark through registration of the mark with
the United States Patent and Trademark Office.
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.
Respondent has the burden of refuting this assumption).
The domain name
that Respondent registered, <fortisbenifitsdental.com>, is
confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark
because the domain name fully incorporates the dominant feature of the mark,
deletes the words “insurance” and “company,” and merely adds the descriptive
word “dental.” The Panel finds that the deletion of the words “insurance” and
“company,” and the addition of the descriptive word “dental” are insufficient
to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See
Asprey & Garrard Ltd v. Canlan
Computing, D2000-1262 (WIPO Nov.
14, 2000) (finding that the domain name <asprey.com> is confusingly
similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see
also Hammond Suddards Edge v.
Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the
domain name, “hammondsuddards.net,” is essentially identical to Complainant's
mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies
Complainant independently of the word “Edge”); see also Westfield Corp. v. Hobbs, D2000-0227
(WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name
confusingly similar because the WESTFIELD mark was the dominant element); see
also Quixtar Inv., Inc. v.
Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the
domain name <quixtar-sign-up.com> incorporates in its entirety
Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly
similar).
Furthermore, the
<fortisbenifitsdental.com> domain name is confusingly similar to
Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark because the domain name
incorporates the dominant feature of the mark, with the only difference being
the misspelling of the word “benefit” by replacing the latter “e” with the
latter “i.” See Toronto-Dominion
Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain
names <tdwatergouse.com> and <dwaterhouse.com> are virtually
identical to Complainant’s TD WATERHOUSE name and mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to Complainant’s STATE
FARM mark).
Additionally,
Respondent’s < fortisbenifitsdental.com > domain name is
confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark
because the domain name incorporates the dominant features of Complainant’s
mark in its entirety and only deviates with the addition of the generic
top-level domain “.com.” The mere
addition of generic top-level domains does not negate the confusing similarity
between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Fed’n of
Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark GAY
GAMES); see also Little Six,
Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <fortisbenifitsdental.com>
domain name that contains the dominant features of Complainant’s FORTIS
BENEFITS INSURANCE COMPANY mark. The
burden shifts to Respondent to show that it does have rights or legitimate
interests once Complainant establishes a prima facie case pursuant to
Policy ¶ 4(a)(ii). Due to Respondent’s
failure to respond to the Complaint, it is assumed that Respondent lacks rights
and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that Respondent has no rights or legitimate interests with respect to
the domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that
under certain circumstances the mere assertion by Complainant that Respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to Respondent to demonstrate that such a right or legitimate interest does
exist); see also Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name).
Moreover, where
Respondent does not respond, the Panel may accept all reasonable allegations
and inferences in the Complaint as true.
See 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.”); see
also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Respondent is
using the <fortisbenifitsdental.com> domain name to redirect
Internet users to a search engine devoted to insurance matters and Internet
gambling. Respondent’s use of Complainant’s
mark in the disputed domain name for commercial purposes is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6,
2003) (holding that Respondent’s use
of Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services); see also
Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat.
Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank
but for links to other websites, is not a legitimate use of the domain names); see
also FAO Schwarz v. Zuccarini, FA
95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests
in the domain names <faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com> where Respondent was using
these domain names to link to an advertising website).
Respondent has
offered no evidence and no proof in the record suggests that Respondent is
commonly known by the <fortisbenifitsdental.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by the disputed
domain name and is not using the domain name in connection with a legitimate or
fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that
Respondent acted in bad faith in registering and using a domain name that
contains in its entirety Complainant’s protected mark. The record permits the inference that
Respondent is capitalizing on the goodwill of the FORTIS BENEFITS INSURANCE COMPANY mark by using the disputed domain name to redirect
Internet users to a search engine devoted to insurance matters and Internet
gambling.
Since the disputed domain name contains the dominant feature of
Complainant’s mark, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting website. Therefore, Respondent’s opportunistic use of
the disputed domain name represents bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also 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).
Moreover, Respondent had
actual or constructive knowledge of Complainant’s rights in the FORTIS BENEFITS INSURANCE COMPANY mark due to Complainant’s registration of the mark with the
United States Patent and Trademark Office.
Moreover, the Panel finds that Respondent had actual knowledge of
Complainant’s rights in the FORTIS BENEFITS INSURANCE COMPANY mark
because of the obvious relationship between the content of the website and
Complainant’s business. Thus, the Panel concludes that
Respondent’s registration of the <fortisbenifitsdental.com> domain
name with actual knowledge of Complainant’s rights in the FORTIS
BENEFITS INSURANCE COMPANY mark is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph
4(b) sets forth certain circumstances, without limitation, that shall be
evidence of registration and use of a domain name in bad faith); see also
Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about the Complainant’s
mark when it registered the subject domain name”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <fortisbenifitsdental.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 22, 2005.
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