Liberty Mutual Insurance Company v. Unasi
Inc.
Claim
Number: FA0508000528455
Complainant is Liberty Mutual Insurance Company (“Complainant”),
represented by Christopher Sloan, 175 Berkeley Street, Boston, MA
02117. Respondent is Unasi Inc. (“Respondent”), Galerias
Alvear 3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <libertymutualcareers.com>, <libertymutualcareer.com>,
<libertymtual.com>, <libertymutula.com>, <libertymutua.com>,
<libertymitual.com>, <libertymurual.com>, <libertymutusl.com>,
<libertymuual.com>, <libertymutyal.com>, <libertymuutal.com>,
<libretymutual.com>, <libetrymutual.com>, <libertyutual.com>,
<linertymutual.com> and <ilbertymutual.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 5, 2005.
On
August 1, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the <libertymutualcareers.com>,
<libertymutualcareer.com>, <libertymtual.com>, <libertymutula.com>,
<libertymutua.com>, <libertymitual.com>, <libertymurual.com>,
<libertymutusl.com>, <libertymuual.com>, <libertymutyal.com>,
<libertymuutal.com>, <libretymutual.com>, <libetrymutual.com>,
<libertyutual.com>, <linertymutual.com> and <ilbertymutual.com>
domain names are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and
that Respondent is the current registrant of the names. 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
August 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 25, 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@libertymutualcareers.com, postmaster@libertymutualcareer.com,
postmaster@libertymtual.com, postmaster@libertymutula.com, postmaster@libertymutua.com,
postmaster@libertymitual.com, postmaster@libertymurual.com, postmaster@libertymutusl.com,
postmaster@libertymuual.com, postmaster@libertymutyal.com, postmaster@libertymuutal.com,
postmaster@libretymutual.com, postmaster@libetrymutual.com, postmaster@libertyutual.com,
postmaster@linertymutual.com, and postmaster@ilbertymutual.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 31, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <libertymutualcareers.com>,
<libertymutualcareer.com>, <libertymtual.com>, <libertymutula.com>,
<libertymutua.com>, <libertymitual.com>, <libertymurual.com>,
<libertymutusl.com>, <libertymuual.com>, <libertymutyal.com>,
<libertymuutal.com>, <libretymutual.com>, <libetrymutual.com>,
<libertyutual.com>, <linertymutual.com> and <ilbertymutual.com>
domain names are confusingly similar to Complainant’s LIBERTY MUTUAL mark.
2. Respondent does not have any rights or
legitimate interests in the <libertymutualcareers.com>, <libertymutualcareer.com>,
<libertymtual.com>, <libertymutula.com>, <libertymutua.com>,
<libertymitual.com>, <libertymurual.com>, <libertymutusl.com>,
<libertymuual.com>, <libertymutyal.com>, <libertymuutal.com>,
<libretymutual.com>, <libetrymutual.com>, <libertyutual.com>,
<linertymutual.com> and <ilbertymutual.com> domain
names.
3. Respondent registered and used the <libertymutualcareers.com>,
<libertymutualcareer.com>, <libertymtual.com>, <libertymutula.com>,
<libertymutua.com>, <libertymitual.com>, <libertymurual.com>,
<libertymutusl.com>, <libertymuual.com>, <libertymutyal.com>,
<libertymuutal.com>, <libretymutual.com>, <libetrymutual.com>,
<libertyutual.com>, <linertymutual.com> and <ilbertymutual.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Liberty Mutual Insurance Company, is a member
of the Liberty Mutual Group, which is a diversified worldwide insurance
services organization that was founded in Boston in 1912. With over 38,000 employees in over 900
offices throughout the United States and worldwide, Complainant is one of the
largest multi-line insurers in the property and casualty field and currently
ranks number 111 among the Fortune 500 list of largest U.S. companies.
Complainant holds registrations with the United States Patent and
Trademark Office (“USPTO”) for the LIBERTY MUTUAL mark (Reg. No. 1,405,249
issued August 12, 1986 and Reg. No. 2,734,195 issued July 8, 2003). In addition Complainant owns several registrations
and pending registrations in numerous countries worldwide. Furthermore, Complainant has spent
considerable amounts of time and money in advertising its LIBERTY MUTUAL mark
via various forms of media.
Respondent registered the <libertymutula.com> and <libertymutua.com> domain
names on January 24, 2005; the <libertymutualcareers.com>
domain name on January 28, 2005; the <libertyutual.com> and <libertymtual.com>
domain names on January 31, 2005;
the <libertymutualcareer.com> domain name on February 7,
2005; the <linertymutual.com> and
<libertymitual.com> domain names on February 8, 2005; the <libertymurual.com> domain
name on February 21, 2005; the <libertymutusl.com>, <libertymuual.com>,
<libetrymutual.com>, <libretymutual.com> and <libertymuutal.com>
domain names on February 28, 2005; the <libertymutyal.com> domain
name on March 5, 2005; and the <ilbertymutual.com> domain name on
March 22, 2005. The disputed domain names resolve to
websites that feature generic search engines and display links to various
products and services. Furthermore, the
Panel presumes that Respondent receives click-through fees for redirecting
Internet users to third-party websites via the links on the website at the
disputed domain name.
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
asserts rights in the LIBERTY MUTUAL mark based on its registration of the mark
with the USPTO. It is well-established
under the Policy that a complainant’s registration of a mark with a federal
authority establishes a prima facie case of the complainant’s
rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“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.”); see
also 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a
determination that a mark is registrable, by so issuing a registration, as
indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”).
The <libertymutualcareers.com>
and <libertymutualcareer.com> domain names incorporate
Complainant’s LIBERTY MUTUAL mark in its entirety, adding only the common or
descriptive terms “career” or “careers” and the generic top-level domain
(“gTLD”) “.com.” Adding a term and gTLD
to Complainant’s mark is not sufficient to negate the confusing similarity
between the domain names and Complainant’s registered mark under Policy ¶
4(a)(i). 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr.
22, 2000) (finding that "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").
The <libertymtual.com>, <libertymutula.com>, <libertymutua.com>,
<libertymitual.com>, <libertymurual.com>, <libertymutusl.com>,
<libertymuual.com>, <libertymutyal.com>, <libertymuutal.com>,
<libretymutual.com>, <libetrymutual.com>, <libertyutual.com>,
<linertymutual.com> and <ilbertymutual.com> domain
names all consist of simple misspellings of Complainant’s LIBERTY MUTUAL mark
formed by adding, deleting or transposing letters within the mark. This is evidence of “typosquatting,” a
practice that involves taking advantage of simple misspellings of a
complainant’s mark to divert Internet users searching for the complainant. The Panel concludes that Respondent’s use of
typosquatting to create domain names renders the disputed domain names
confusingly similar to Complainant’s mark.
See Neiman Marcus Group, Inc. v.
Party Night, Inc., FA 114546 (Nat. Arb.
Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark); see also Belkin Components v. Gallant, FA
97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain
name confusingly similar to the complainant's BELKIN mark because the name
merely replaced the letter “i” in the complainant's mark with the letter “e”); see
also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26,
2002) (finding <googel.com> to be confusingly similar to the
complainant’s GOOGLE mark and noting that “[t]he transposition of two letters
does not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflects a very probable typographical error”).
Therefore, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
the initial burden of proving that Respondent lacks rights and legitimate
interests in the disputed domain names.
In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). Thus, having found that Complainant has met
its initial burden by establishing a prima facie case, the Panel will
now analyze whether Respondent has met its burden to establish rights or
legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the disputed domain names and
the WHOIS information for the disputed domain names lists Respondent as “Unasi Inc.” Because Respondent has failed to present any evidence to the contrary,
the Panel is permitted to accept Complainant’s assertions that Respondent is
not commonly known by the disputed domain names. The Panel, therefore, finds that Respondent has not established
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”).
Respondent is
using the disputed domain names to divert Internet users searching for
information regarding Complainant to websites that feature generic search
engines and links to various products and services, some of which compete with
Complainant’s business. Furthermore,
the Panel presumes that Respondent derives commercial benefit from these diversions
due to click-through fees from the links on the websites. The Panel finds that such use of confusingly
similar versions of Complainant’s LIBERTY MUTUAL mark to attract Internet users
to Respondent’s commercial website for Respondent’s benefit does not qualify as
a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v.
Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26,
2003) (“Respondent's registration and use of the <gayaol.com> domain name
with the intent to divert Internet users to Respondent's website suggests that
Respondent has no rights to or legitimate interests in the disputed domain name
pursuant to Policy Paragraph 4(a)(ii).”).
Furthermore, in failing to submit a
response to Complainant’s contentions, Respondent has neglected to provide any
evidence that would challenge Complainant’s prima facie case. The Panel, therefore, finds that Respondent
has not established rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c)(i) or (iii). See
Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26,
2000) (“In the absence of direct evidence, the complainant and the panel must
resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the
Rules [authorizes] a panel to draw such inferences from respondent’s failure to
respond ‘as it considers appropriate.’”).
Consequently,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed
domain names resolve to websites that feature generic search engines and
directories of links to various products and services similar to those of
Complainant. The Panel presumes that
Respondent receives commissions for diverting Internet users to third-party websites
via the search engines and links located at Respondent’s websites. Additionally, Respondent’s use of
confusingly similar versions of Complainant’s distinctive LIBERTY MUTUAL mark
in the domain names creates a likelihood of confusion and suggests an attempt
to attract Internet users to Respondent’s websites for Respondent’s commercial
gain. The Panel finds that this is
evidence of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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.”); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also 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)).
The disputed domain
names registered by Respondent consist of misspelled versions of Complainant’s
well-known LIBERTY MUTUAL mark. Thus, Respondent is engaging in the practice
of “typosquatting” by taking advantage of potential typographical errors made
by Internauts intending to reach a website corresponding to Complainant’s
LIBERTY MUTUAL mark. Under the Policy,
typosquatting is sufficient evidence of bad faith registration and use of the
disputed domain names. The Panel,
therefore, finds that Respondent registered and used the disputed domain names
in bad faith pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding
the respondent registered and used the domain name in bad faith because the
respondent “created ‘a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site or location’. . . through Respondent’s persistent practice of
‘typosquatting’”); see also Nat’l Ass’n of Prof’l Baseball League,
Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the
intentional misspelling of words with [the] intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”).
Furthermore,
Respondent’s registration of domain names that incorporate Complainant’s
LIBERTY MUTUAL mark or simple misspellings of the mark suggests that Respondent
knew of Complainant’s rights in the mark when Respondent registered the domain
names. Additionally, Complainant’s
registration of its LIBERTY MUTUAL mark with the USPTO bestows upon Respondent
constructive knowledge of Complainant’s rights in the mark. Respondent’s registration of domain names
that contain confusingly similar versions of Complainant’s mark, with knowledge
of Complainant’s rights in the mark, is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); 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”); see also 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.”).
Accordingly, 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 <libertymutualcareers.com>, <libertymutualcareer.com>,
<libertymtual.com>, <libertymutula.com>, <libertymutua.com>,
<libertymitual.com>, <libertymurual.com>, <libertymutusl.com>,
<libertymuual.com>, <libertymutyal.com>, <libertymuutal.com>,
<libretymutual.com>, <libetrymutual.com>, <libertyutual.com>,
<linertymutual.com> and <ilbertymutual.com> domain
names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 14, 2005
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