Zander Insurance Agency, Inc. v. Whois Privacy Protection Service, Inc. c/o Whois Agent
Claim Number: FA0510000578631
Complainant is Zander Insurance Agency, Inc. (“Complainant”), represented by Christopher A. Sloan of Boult, Cummings, Conners & Berry, PLC, 1600 Division Street, Suite 700, Nashville, TN, 37203. Respondent is Whois Privacy Protection Service, Inc. c/o Whois Agent (“Respondent”), PMB 368, 14150 NE 20th St – F!, C/O zanderinsurance.com, Bellevue, WA 98007, US.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zanderinsurance.com>, registered with Enom, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 21, 2005.
On October 18, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <zanderinsurance.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@zanderinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <zanderinsurance.com> domain name is identical to Complainant’s ZANDER INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <zanderinsurance.com> domain name.
3. Respondent registered and used the <zanderinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zander Insurance Agency, Inc., has used its
ZANDER INSURANCE mark in commerce since the 1920s in connection with its
insurance brokerage business. Recently,
Complainant’s mark has acquired national fame as a result of the endorsement by
nationally-renowned financial expert and talk radio host Dave Ramsey.
Respondent registered the <zanderinsurance.com> domain name on June 25, 2002. The domain name resolves to a commercial website that features pop-up and banner advertisements and links to numerous categories of businesses, including some of Complainant’s direct competitors.
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 that it has common law rights in the ZANDER INSURANCE mark, because Complainant has used its mark in commerce since the 1920s in association with its insurance brokerage business. Complainant further contends that its mark has become famous throughout the United States due to the endorsement of the mark by financial expert Dave Ramsey. The Panel finds that Complainant has made a prima facie case of its common law rights in the mark. See 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”); see also 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).
The <zanderinsurance.com> domain name includes Complainant’s ZANDER INSURANCE mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.” The addition of the gTLD to Complainant’s mark is irrelevant to a determination under Policy ¶ 4(a)(i), and the Panel finds that the disputed domain name is identical to Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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").
Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts 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”). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶4(c).
There is no evidence in the record, including the WHOIS information, that would suggest that Respondent is commonly known by the <zanderinsurance.com> domain name, and Respondent has not come forward with any such evidence. Therefore, the Panel determines that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); 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").
Complainant argues that the <zanderinsurance.com> domain name resolves to a website that features pop-up and banner advertisements and displays links to various commercial websites, including some that offer competing insurance services. Respondent presumably earns click-through fees for diverting Internet users to these third-party websites via Respondent’s domain name. The Panel does not consider it a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) where Respondent is using Complainant’s ZANDER INSURANCE mark to operate a commercial website for Respondent’s financial benefit. See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent use of Complainant’s ZANDER INSURANCE mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s commercial website. The Panel finds that Respondent’s registration and use of the <zanderinsurance.com> domain name to benefit from the goodwill associated with Complainant’s mark is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); 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 State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zanderinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 5, 2005
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