Fortis SA/NV and Fortis NV v. Albert
Jackson
Claim
Number: FA0503000435002
Complainant is Fortis SA/NV and Fortis NV (“Complainant”),
represented by Marsha Stolt, of Moss & Barnett, P.A.,
90 So. Seventh St., 4800 Wells Fargo Center, Minneapolis, MN 55402-4129. Respondent is Albert Jackson (“Respondent”), PO Box 2014, George Town, Grand
Cayman KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fortisbenefit.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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 8, 2005.
On
March 7, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <fortisbenefit.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
March 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 30, 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@fortisbenefit.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 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 <fortisbenefit.com>
domain name is confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE
COMPANY mark.
2. Respondent does not have any rights or
legitimate interests in the <fortisbenefit.com> domain name.
3. Respondent registered and used the <fortisbenefit.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Fortis SA/NV and
Fortis NV (collectively “Complainant”) are joint parent companies of a group of
international companies. Complainant is
one of the largest providers of financial, business and insurance services,
including insurance, annuities, cash and asset management services and employee
benefits and pension plan management. Complainant uses the FORTIS BENEFITS
INSURANCE COMPANY mark in conjunction with these services.
Complainant has
registered the FORTIS BENEFITS INSURANCE COMPANY mark with the U.S. Patent and
Trademark Office (“USPTO”) (Reg. No. 2,593,554 issued July 16, 2002).
Respondent
registered the <fortisbenefit.com> domain name on August 12,
2003. Respondent’s domain name resolves
to a website that features links to competing insurance-related 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.
Complainant has
established rights in the FORTIS BENEFITS INSURANCE COMPANY mark through
registration of the mark with the USPTO.
See 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. The
respondent has the burden of refuting this assumption); see also 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.”).
Respondent’s <fortisbenefit.com>
domain name is confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE
COMPANY mark. Respondent’s domain name
incorporates Complainant’s mark and omits the terms “insurance” and “company,”
leaving “fortis” and “benefits” (which it changes to the singular form,
“benefit”), the dominant features of Complainant’s mark. Such minor changes are insufficient to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO
Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is
essentially identical to the complainant’s mark, Hammond Suddards Edge,
where the name “Hammond Suddards”
identifies the complainant independently of the word “Edge”); see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to the complainant’s mark, where the
complainant holds the WEST JET AIR CENTER mark).
Furthermore, the
addition of the generic top-level domain “.com” and the omission of the spaces
in between the terms of Complainant’s mark is insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (“the addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is
required of domain name registrants”); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO
Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical
to the complainant’s registered ROBOHELP trademark, and that the “addition of
.com is not a distinguishing difference”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); see also Talk
City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[i]n the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint”).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <fortisbenefit.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure
to respond not only results in its failure to meet its burden, but also will be
viewed as evidence itself that Respondent lacks rights and legitimate interests
in the disputed domain name.”).
Respondent is
using the confusingly similar <fortisbenefit.com> domain name to
operate a website that features links to competing insurance-related
services. The Panel finds that such
competing use is not a use in connection with 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). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where the respondent generated commercial gain by
intentionally and misleadingly diverting users away from the complainant’s site
to a competing website).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark. Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the <fortisbenefit.com> 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 the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Compagnie de Saint Gobain
v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <fortisbenefit.com> domain name, which is confusingly
similar to Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark, to operate a
website that features links to competing insurance-related services. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
the respondent diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Since Respondent’s
domain name is confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE
COMPANY mark, Internet users accessing Respondent’s domain name may become
confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <fortisbenefit.com>
domain name constitutes 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 the respondent profits
from its diversionary use of the complainant’s mark when the domain name
resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the 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 the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
Furthermore,
Respondent registered the <fortisbenefit.com> domain name with
actual or constructive knowledge of Complainant’s rights in the FORTIS BENEFIT
INSURANCE COMPANY mark due to Complainant’s registration of the mark with the
USPTO. Moreover, the Panel infers that
Respondent registered the domain name with actual knowledge of Complainant’s
rights in the mark due to the obvious connection between the content advertised
on Respondent’s website and Complainant’s business. Registration of a domain name that is confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when the respondent reasonably should have been aware
of the complainant’s trademarks, actually or constructively.”); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he
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 Pfizer, Inc.
v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between the complainant’s mark and the content advertised on the respondent’s
website was obvious, the 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 <fortisbenefit.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated:
April 21, 2005
National Arbitration Forum