Liberty Mutual Insurance Company v. I D L
R G
Claim
Number: FA0507000514098
Complainant is Liberty Mutual Insurance Company (“Complainant”),
175 Berkeley Street, Boston, MA 02117.
Respondent is I D L R G (“Respondent”), Kalian, P.O. Box Bhilowai,
Hoshiarpur, Punjab 146104, India.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <libertymutualhomeinsurance.com>, <libertymutuallifeinsurance.com>,
<americanlibertyinsurance.com>, and <americafirstinsurance.com>,
registered with Iholdings.com, Inc.
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 July
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 19, 2005.
On
July 15, 2005, Iholdings.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <libertymutualhomeinsurance.com>,
<libertymutuallifeinsurance.com>, <americanlibertyinsurance.com>,
and <americafirstinsurance.com> are registered with Iholdings.com,
Inc. and that Respondent is the current registrant of the names. Iholdings.com, Inc. has verified that
Respondent is bound by the Iholdings.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
July 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 11, 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@libertymutualhomeinsurance.com, postmaster@libertymutuallifeinsurance.com,
postmaster@americanlibertyinsurance.com, and postmaster@americafirstinsurance.com
by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 19, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <libertymutualhomeinsurance.com>,
<libertymutuallifeinsurance.com>, <americanlibertyinsurance.com>,
and <americafirstinsurance.com> domain names are confusingly
similar to Complainant’s LIBERTY MUTUAL, LIBERTY INSURANCE, and AMERICA FIRST
INSURANCE MEMBER OF LIBERTY MUTUAL GROUP marks.
2. Respondent does not have any rights or
legitimate interests in the <libertymutualhomeinsurance.com>, <libertymutuallifeinsurance.com>,
<americanlibertyinsurance.com>, and <americafirstinsurance.com>
domain names.
3. Respondent registered and used the <libertymutualhomeinsurance.com>,
<libertymutuallifeinsurance.com>, <americanlibertyinsurance.com>,
and <americafirstinsurance.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Liberty Mutual Insurance Company, is a worldwide provider of property and
casualty insurance. Complainant employs
over 38,000 people in over 900 offices throughout the United States and in 19
countries. Complainant holds numerous
registrations for its LIBERTY MUTUAL family of marks, including the LIBERTY
MUTUAL mark (Reg. No. 1,405,249 issued August 12, 1986) and the AMERICA FIRST
INSURANCE MEMBER OF LIBERTY MUTUAL GROUP (Reg. No. 2,901,530 issued November 9,
2004) registered with the United States Patent and Trademark Office
(“USPTO”). Furthermore, Complainant
shows long established commercial use in the unregistered LIBERTY INSURANCE
mark.
Respondent
registered the <libertymutualhomeinsurance.com>, <libertymutuallifeinsurance.com>,
<americanlibertyinsurance.com>, and <americafirstinsurance.com>
domain names in October 2004. Each of
the dispusted domain names resolves to websites featuring various links to both
competing and non-competing websites.
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. The Panel
is entitled to accept all reasonable allegations and inferences set forth in
the Complaint as true unless the evidence is clearly contradictory. 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.").
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 LIBERTY MUTUAL and AMERICA FIRST INSURANCE MEMBER OF
LIBERTY MUTUAL GROUP marks pursuant to Policy ¶ 4(a)(i) through registration of
the marks with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); See also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant
asserts common law rights in the LIBERTY INSURANCE mark. The Panel finds that Complainant has used
the mark as a source identifier for products and services for several years;
and as a result, the mark has acquired secondary meaning. Thus, the Panel concludes that Complainant
has established common law rights in the LIBERTY INSURANCE mark pursuant to
Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH that it has used since 1982); see also British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the
Policy “does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks”);
Complainant
further asserts that Respondent’s <libertymutualhomeinsurance.com>,
<libertymutuallifeinsurance.com>, and <americafirstinsurance.com>
domain names are confusingly similar to Complainant’s LIBERTY MUTUAL and
AMERICA FIRST INSURANCE MEMBER OF LIBERTY MUTUAL GROUP marks. Respondent’s <libertymutualhomeinsurance.com>
and <libertymutuallifeinsurance.com> domain names incorporate
Complainant’s entire LIBERTY MUTUAL mark and adds the generic terms that
describe the business in which Complainant is engaged. The <libertymutualhomeinsurance.com>
domain name adds the generic terms “home” and “insurance” while the <libertymutuallifeinsurance.com>
domain name adds the terms “life” and “insurance” to Complainant’s federally
registered mark. Such distinctions are
insufficient to differentiate Respondent’s domain names from Complainant’s
trademark pursuant to Policy ¶ 4(a)(i).
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also Parfums Christian Dior v. 1 Netpower,
Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that
added the descriptive words "fashion" or "cosmetics" after
the trademark were confusingly similar to the trademark).
Similarly,
Respondent’s <americanlibertyinsurance.com> domain name
incorporates Complainant’s entire LIBERTY INSURANCE mark and adds the
geographically descriptive term “american.”
The addition of a a geographically descriptive term to the mark fails to
distinguish the domain name pursuant to Policy ¶ 4(a)(i). See VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the
complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word
“India” to the complainant’s mark); see also JVC Americas Corp. v. Macafee,
CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the
respondent, <jvc-america.com>, is substantially similar to, and nearly
identical to the complainant's JVC mark).
Finally,
Complainant asserts that Respondent’s <americafirstinsurance.com>
domain name is confusingly similar to Complainant’s AMERICA FIRST INSURANCE
MEMBER OF LIBERTY MUTUAL GROUP mark.
The disputed domain name truncates Complainant’s federally registered
trademark but retains the dominant characteristics of the mark, the terms
“America,” “first,” and “insurance.” As
a result, the Panel finds the domain name to be confusingly similar pursuant to
Policy ¶ 4(a)(i). See Down E. Enter.
Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001)
(finding the domain name <downeastmagazine.com> confusingly similar to
the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see
also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001)
(finding that the <mnlottery.com> domain name is confusingly similar to
the complainant’s MINNESOTA STATE LOTTERY registered mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interest in the disputed
domain names. Complainant’s assertion
creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the
burden of proof onto Respondent. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”). Because Respondent failed to respond, the
Panel infers that no rights or legitimate interests exist 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, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Respondent is
using the confusingly similar domain names to operate websites that feature
links to various competing and non-competing websites, through which Respondent
presumably earns referral fees. Such
diversionary use is neither a bona fide offering of goods and services
under Policy ¶ 4(c)(i) nor a legitimate use noncommercial or fair use under
Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
domain names).
Furthermore, no
affirmative evidence has been set forth showing that Respondent is commonly
known by any of the disputed domain names.
Therefore, Respondent has failed to show evidence of rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 <libertymutualhomeinsurance.com>, <libertymutuallifeinsurance.com>,
<americanlibertyinsurance.com>, and <americafirstinsurance.com>
domain names to operate websites that feature links to various competing and
non-competing websites through which Respondent presumably receives referral
fees. Such use of a confusingly similar
domain name creates a likelihood of confusion as to Complainant’s sponsorship
of and affiliation with the resulting commercial website. The Panel finds this to be evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
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 <libertymutualhomeinsurance.com>, <libertymutuallifeinsurance.com>,
<americanlibertyinsurance.com>, and <americafirstinsurance.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
August 30, 2005
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