Hagerty Insurance Agency, Inc. v. 7 Seas
Group c/o Web Master
Claim
Number: FA0504000451099
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 7 Seas Group c/o Web Master (“Respondent”), G.04, 173 Mounts Bay
Rd., Perth, Western Australia, 6000, Australia.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hagertyfinance.com>, registered with Go
Daddy Software, 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 April 4,
2005; the National Arbitration Forum received a hard copy of the Complaint April
6, 2005.
On
April 7, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hagertyfinance.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. verified that Respondent is bound by the Go Daddy Software, 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
April 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 2, 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@hagertyfinance.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
May 9, 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, <hagertyfinance.com>, is confusingly similar to
Complainant’s HAGERTY mark.
2. Respondent has no rights to or legitimate
interests in the <hagertyfinance.com> domain name.
3. Respondent registered and used the <hagertyfinance.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Hagerty Insurance Agency, Inc., is a nation-wide insurance agency that
specializes in the sale of classic and collector car insurance products and
related services. Complainant holds a
trademark registration with the United States Patent and Trademark Office for
the HAGERTY mark (Reg. No. 2,814,153 issued February 10, 2004).
Respondent, 7
Seas Group c/o Web Master, registered the <hagertyfinance.com>
domain name on February 24, 2005.
The disputed domain name redirects Internet users to the
<speedsterhaus.com> domain name that displays a “This Site Coming Soon”
banner and features an advertisement for a collector car kit.
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 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
established using extrinsic proof in this proceeding that it has presumptive
rights in the HAGERTY mark through registration with the United States Patent
and Trademark Office and by continuous use of its mark in commerce. 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.”).
The <hagertyfinance.com> domain name
registered by Respondent is confusingly similar to Complainant’s HAGERTY mark
because the domain name incorporates Complainant’s mark in its entirety and
merely adds the generic or descriptive term “finance” and the generic top-level
domain (gTLD) “.com.” It has been
consistently held under the Policy that the addition of a generic or
descriptive term and a gTLD will not be adequate to distinguish the domain name
from Complainant’s registered mark. See
Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to the complainant's registered trademark GAY
GAMES).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and alleges that Respondent has no rights or legitimate
interests in the <hagertyfinance.com>
domain name that contains the dominant features of Complainant’s HAGERTY
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, the Panel assumes that Respondent has no rights to or 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 the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on the 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 the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the 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 the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the 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, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Moreover,
because Respondent has not submitted a response, the Panel accepts 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 <hagertyfinance.com> domain
name to redirect Internet users to a website that displays a “This Site Coming
Soon” banner and features an advertisement for a collector car kit. 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 the respondent’s use of the
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 the 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 the 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 <hagertyfinance.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 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); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because the respondent was not commonly known by the
disputed domain name and was 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 mark.
The record permits the inference that Respondent is capitalizing on the
goodwill of the HAGERTY mark by using the <hagertyfinance.com> domain name to
redirect Internet users to a website that displays a “This Site Coming Soon”
banner and features an advertisement for a collector car kit. Since the
disputed domain name contains Complainant’s mark in its entirety, 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 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).
Moreover, Respondent had
actual or constructive knowledge of Complainant’s rights in the HAGERTY 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 HAGERTY
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 <hagertyfinance.com> domain name
with actual knowledge of Complainant’s rights in the HAGERTY 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 the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark and thus the 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 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 <hagertyfinance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 19, 2005
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