national arbitration
forum
DECISION
Citigroup Inc. and Primerica Life Insurance Company v. E-Promote
Claim Number: FA0603000653662
PARTIES
Complainants are Citigroup Inc. and Primerica Life Insurance Company (collectively, “Complainant”), represented by Christopher J. Willis, of Rogers & Hardin LLP, 229 Peachtree St., Suite 2700, Atlanta, GA 30303. Respondent is E-Promote (“Respondent”), 536 Leavenworth St., San Francisco, CA 94109.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <primericalifeinsurance.com>, registered with Dotster.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 9, 2006.
On March 6, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <primericalifeinsurance.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 30, 2006 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@primericalifeinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <primericalifeinsurance.com> domain name is confusingly similar to Complainant’s PRIMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <primericalifeinsurance.com> domain name.
3. Respondent registered and used the <primericalifeinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Citigroup Inc., is an international financial services company. Primerica Life Insurance Company is a sudsidiary of Complainant that has offered affordable term life insurance, first mortgages, annuities and retirement savings vehicles to middle-income families under the PRIMERICA mark since 1977. The Panel imputes the subsidiary’s use of the mark to Complainant for purposes of this decision. Complainant has registered the PRIMERICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,501,588 issued August 23, 1988).
Respondent registered the <primericalifeinsurance.com> domain name on June 10, 2003. Respondent’s domain name resolves to a website at the <insurecom.com> domain name, which offers life insurance quotes from insurance companies other than Complainant and its subsidiary.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant has established rights in the PRIMERICA mark by
registering the mark 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.”).
Respondent’s <primericalifeinsurance.com> domain name is confusingly similar to Complainant’s PRIMERICA mark pursuant to Policy ¶ 4(a)(i), because it fully incorporates the mark and merely adds a generic phrase, “life insurance,” which describes Complainant’s business. In Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), the respondent registered four domain names incorporating the complainant’s DIOR mark and merely added the generic terms “fashion” or “cosmetics” to the end. The panel found that the domain names were confusingly similar to the mark because the complainant’s mark was well-known in connection with “fashion” and “cosmetics.” Id. Therefore, Respondent’s domain name is also confusingly similar, because the mere addition of a generic term describing Complainant’s business does not sufficiently distinguish the domain name from the mark. 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant has the initial burden of proof in establishing that
Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie
case in support of its allegations, the burden then shifts to Respondent to
show it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See 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 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”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); 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.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain names under the name “E-Promote,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent’s disputed domain name, which
is confusingly similar to Complainant’s PRIMERICA mark, resolves to a website
in direct competition with Complainant.
In Citigroup Inc. v. Horoshiy, Inc., FA 290633 (Nat. Arb.
Forum Aug. 11, 2004), the panel found that the respondent’s use of domain names
that were confusingly similar to the complainant’s CITIBANK marks to redirect Internet
users seeking the complainant’s products to a website with links offering
products that competed with the complainant did not represent 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).
Here, Respondent is also diverting Internet users seeking Complainant’s
financial services under the PRIMERICA mark to a website offering competing
services. Such diversionary use of the
disputed domain name for Respondent’s own commercial gain does not constitute 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 pursuant to Policy ¶
4(c)(iii). See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has registered and is using the <primericalifeinsurance.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed
domain name resolves to a website providing links to websites in direct
competition with Complainant.
Respondent likely receives click-through fees for each consumer it
redirects to this website. Therefore,
Respondent is taking advantage of the likelihood of confusion between
Respondent’s domain name, the website content, and Complainant’s PRIMERICA
mark, and capitalizing on the goodwill associated with the mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark).
Furthermore, Respondent
has registered and used the disputed domain name for the sole purpose of
disrupting the business of Complainant.
Respondent’s <primericalifeinsurance.com> domain name
resolves to a website at the <insurecom.com> domain name, which offers
competing insurance quotes. Therefore,
Respondent has registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <primericalifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 18, 2006