Fortis SA/NV & Fortis NV v. Digi Real Estate Foundation
Claim Number: FA0608000785532
Complainant is Fortis SA/NV and Fortis NV (“Complainant”), represented by Marsha
Stolt, of Moss & Barnett, P.A., 90 So.
The domain name at issue is <fortisbenefitsdental.com>, registered with Gonames.ca.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2006.
On September
1, 2006, Gonames.ca confirmed by
e-mail to the National Arbitration Forum that the <fortisbenefitsdental.com> domain name is registered with
Gonames.ca
and that Respondent is the current registrant of the name. Gonames.ca has verified that Respondent is bound by the Gonames.ca 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 September 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 27, 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@fortisbenefitsdental.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <fortisbenefitsdental.com> domain name is confusingly similar to Complainant’s FORTIS and FORTIS BENEFITS DENTALCARE marks.
2. Respondent does not have any rights or legitimate interests in the <fortisbenefitsdental.com> domain name.
3. Respondent registered and used the <fortisbenefitsdental.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fortis SA/NV, and Complainant, Fortis NV, are joint parent companies of a group of international companies. The two entities shall be referred to collectively as “Complainant.” Complainant is an international provider of financial, business, and insurance services. Complainant’s insurances services include dental insurance. In connection with its general business Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) of the FORTIS mark (Reg. No. 2,457,698 issued June 5, 2001; Reg. No. 1,902,973 issued August 4, 1995). Complainant also holds a registration of the FORTIS BENEFITS DENTALCARE mark (Reg. No. 2,960,094 issued June 7, 2005) with the USPTO, which is used in connection with its dental insurance services.
Respondent registered the <fortisbenefitsdental.com>
domain name on February 19,
2006. Respondent is using the domain
name to redirect Internet users to Respondent’s website. Respondent’s website features numerous links
to third-party websites as well as a generic Internet search engine. Many of the links to third-party websites are
for direct competitors of Complainant.
For example, there are links to Cigna, Metlife,
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’s registration of both the
FORTIS and FORTIS BENEFITS DENTALCARE marks predate Respondents
registration of the <fortisbenefitsdental.com>
domain name. The Panel finds that Complainant’s
registration of the marks with the USPTO is sufficient to establish rights in
those marks for purposes of Policy ¶ 4(a)(i).
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.”).
Respondent’s <fortisbenefitsdental.com>
domain name is confusingly similar to Complainant’s FORTIS and FORTIS
BENEFITS DENTALCARE marks. The disputed
domain name includes the FORTIS mark in its entirety and includes the majority
of the FORTIS BENEFITS DENTALCARE mark, merely deleting the term “care.” The combination of the terms “benfits” and
“dental” with the FORTIS mark are obviously descriptive of Complainant’s
insurance services, specifically the benefits provided by Complainant’s dental
insurance. Respondent’s domain name
utilizes Complainant’s marks and is descriptive of Complainant’s business and
is thus, confusingly similar to Complainant’s marks within the meaning of
Policy ¶ 4(a)(i). See Oki
Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks.”); see also
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 Am. Eagle Outfitters, Inc. v. Admin,
FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the
<americaneaglestores.com> domain name to be confusingly similar to the
complainant’s AMERICAN EAGLE OUTFITTERS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the disputed domain name. Complainant’s assertion constitutes a prima
facie case for purposes of the Policy and shifts the burden to Respondent
to demonstrate that it does have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Respondent had the opportunity to present the
Panel with evidence and arguments in support of its rights or legitimate
interests in the <fortisbenefitsdental.com> domain name by
submitting a Response. Respondent’s
failure to do so suggests to the Panel that Respondent lacks those rights or
legitimate interests. Nonetheless, the
Panel will evaluate the available evidence to determine whether Respondent has
rights or legitimate interests as outlined in Policy ¶ 4(c). 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 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.”).
Respondent is using the <fortisbenefitsdental.com> domain name to host a website composed of links to other third-party websites and a generic Internet search engine. Many of the linked third-party websites appear to offer financial and insurance services in direct Competition with Complainant. Presumably, Respondent receives pay-per-click referral fees when Internet users click on these links. Because Respondent is profiting from the links posted at its website, it is not using the disputed domain name in connection with a noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Because Respondent is hosting links to websites in direct competition with Complainant, Respondent is not involved in a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i). Thus, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, there is no available evidence that Respondent
is commonly known by the <fortisbenefitsdental.com> domain
name. Respondent’s WHOIS information
identifies Respondent as “Digi Real Estate Foundation,” name with no obvious
relationship to the disputed domain name.
Complainant asserts, without contradiction, that there is no existing
relationship between Complainant and Respondent and Complainant has not given
Respondent permission to reflect Complainant’s marks in a domain name. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name and lacks rights and legitimate
interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); 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 <fortisbenefitsdental.com> domain name to redirect Internet users to Respondent’s website, which features numerous links to third-party websites offering insurance and financial services in competition with Complainant. Internet users seeking Complainant’s genuine insurance services, particularly dental insurance, might combine the terms of Complainant’s FORTIS and FORTIS BENEFITS DENTALCARE marks in an Internet browser or search engine only to find themselves at Respondent’s website instead. Once at Respondent’s website, Internet users might follow one of the posted third-party links and do business with one of Complainant’s competitors instead of with Complainant. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <fortisbenefitsdental.com> domain
name is confusingly similar to Complainant’s FORTIS and FORTIS BENEFITS
DENTALCARE marks. Internet users seeking
genuine information about Complainant’s goods and services may find themselves
redirected to Respondent’s website. Once
at Respondent’s website, the combination of the confusingly similar domain name
with the links to services and products similar to those offered by
Complainant, such as “Financial Planning,” “Debt Consolidation” and
“Mortgages,” may cause Internet users to mistakenly believe that Respondent’s
website is affiliated with or sponsored by Complainant. Respondent is presumably profiting from this
confusion by receiving the pay-per-click fees generated by the links to
third-party websites. The Panel finds
that such use is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be mislead to Respondent’s website at
the <century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also 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.’”).
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 <fortisbenefitsdental.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 17, 2006
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