National Arbitration Forum

 

DECISION

 

Assurant, Inc. v. Tom Baert

Claim Number: FA0701000893437

 

PARTIES

Complainant is Assurant, Inc. (“Complainant”), represented by Brian M. Davis, of Alston & Bird, LLP, Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC 28280-4000.  Respondent is Tom Baert (“Respondent”), Berenbroekstraat 28, Genk 3600, Belgium.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <assurant.mobi>, registered with Wild West Domains.

 

PANEL

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2007.

 

On January 20, 2007, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <assurant.mobi> domain name is registered with Wild West Domains and that the Respondent is the current registrant of the name.  Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 January 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 15, 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@assurant.mobi by e-mail.

 

A timely Response was received and determined to be complete on February 12, 2007.

 

 

On February 20, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Since at least 1999, Complainant Assurant, Inc., its affiliates and predecessors have provided individuals and groups in North America and in select other markets with a wide array of insurance and other services under the mark ASSURANT.  Complainant owns several registrations and applications for the ASSURANT mark, including U.S. Registration No. 2,543,367 and Benelux Registration No. 779,196.  Complainant also owns the registration for the domain name <assurant.com>.

 

The disputed domain name was registered on September 27, 2006.  On October 17, 2006, a representative of Complainant contacted Respondent regarding his registration of the <assurant.mobi> domain name.  In response, Respondent indicated that the <assurant.mobi> domain name had been registered for a “legitimate non-profit project.”  On December 8, 2006, Respondent sent further communications to another representative of Complainant indicating that the disputed domain name would be utilized in connection with “a mobile-Internet project.”   See Complaint, Exhibit 5.  As of January 11, 2007, the <assurant.mobi> domain name linked to a web page promoting a domain name registrar’s service.

 

Complainant maintains that it owns valid and enforceable statutory and common law rights in the ASSURANT mark by virtue of its continuous use for several years and its trademark registrations.  It further argues that the accused domain name is identical to Complainant’s ASSURANT mark.

 

 Complainant also urges that it does not appear that Respondent has any legitimate rights in “assurant” as a mark or trade name.  Apart from general statements that the disputed domain name will be utilized with “a legitimate non-profit project” and “mobile-internet project,” Complainant argues that Respondent has not provided any evidence that it has specific reasons for registering the domain name.  Moreover, Complainant asserts, the relative fame of its ASSURANT mark makes it extremely unlikely that Respondent registered the assurant.mobi domain name without intending to trade on the goodwill of Complainant’s ASSURANT mark. 

 

Complainant further contends that the disputed domain name was registered and is being used in bad faith.  According to Complainant, “[b]ecause Respondent does not appear to have any valid rights to the ASSURANT mark, and because the ASSURANT mark is well-known in Respondent’s country of origin and elsewhere, the only plausible reason for Respondent to register the <assurant.mobi> domain name is to preclude Complainant from registering its primary service mark in the .mobi top level domain.  Thus, Respondent’s actions demonstrate that it has used and registered the subject domain name in bad faith.”  

 

B. Respondent

Respondent notes that he is a citizen of Belgium who has registered the domain name <assurant.mobi> for use as a mobile internet-based database containing descriptions, photos, therapies, and experiences related to physical injuries caused by sports stress or sports accidents.  The target group of the site consists of physiotherapists, sports doctors, athletes, medical students, personal trainers, and runners.

 

Respondent contends that the term “assurant” is a generic term in both Dutch and French, the official languages of Belgium.  According to Respondent, “[w]e have selected the name ‘ASSURANT’ for our project based on the Dutch meaning of the word (brutal, sassy) referring to the impertinent injury, and the French meaning of the word (insuring, taking care off (sic)) referring to the physiotherapeutic purpose of the website.”

 

With respect to the reputation of Complainant in Europe, Respondent indicates that Complainant’s annual report for 2005 (see Response, Annex 22) notes that Complainant only has European operations in the United Kingdom, Denmark, and Germany and that its primary activities are extended service contracts and credit insurance products through agreements with financial institutions, retailers and cellular-phone companies.  In spite of Complainant’s Benelux trademark registration, Respondent argues, there are no indications that Complainant does business in Belgium.  As such, Respondent urges, Complainant’s ASSURANT mark has no reputation in Belgium.  In his October 17, 2006, email to Complainant (see Response, Annex 20), Respondent stated, “I would like to restate that I have not infringed your trade mark or service mark.  What’s more, I had never heard of your company when I registered the domain name….”

 

Respondent further notes that under the “.mobi” sunrise registration policy, Complainant had four months, until September 26, 2006, within which to register the domain name <assurant.mobi> and chose not to do so.  “[A]s such it must be considered that the Complainant was not interested in the domain name on the date of my registration.”

 

Respondent contends that he has legitimate interests or rights in the domain name.  He argues that before notice of the dispute on October 17, 2006, he had made demonstrable preparations to use the domain name.  Respondent points out that “.mobi” technology is still in an early stage and there is currently a lack of critical mass of potential users for his site due to the current low level of mobile internet users.  Respondent predicts that such critical mass is still one to four years away.  Respondent indicates that, in view of his lack of the required technical expertise, he has contacted a leading IT consulting company and, on three occasions, held meetings to discuss the project.  According to Respondent, “[a]fter the last meeting we decided to postpone further negotiations until enhanced availability of dotMobi technology, developer guides, re-designed dotMobi website packages and mobile internet users, and until the finalization of the writing of the several development/business plans of my projects.”  Respondent argues that the current passive use of the domain name through a parking page does not preclude the possibility that he has rights or legitimate interests in the domain name.

 

Respondent also argues that he is making legitimate noncommercial or fair use of the domain name without intent to misleadingly divert consumers or to tarnish Complainant’s ASSURANT mark.

 

According to Respondent, the domain name in dispute was not registered and is not being used in bad faith.  Respondent asserts that: (1) there are no indications that he sought advantages of any nature from Complainant; (2) he was not aware of the Complainant’s mark; (3) there are no indications of any purpose to disrupt the business of Complainant; and (4) he is engaged in a noncommercial initiative.

 

Given that, among other things: (1) Complainant is a significant company assisted by good lawyers; (2) it can be found that Complainant was aware of the common use of the word “assurant” in several languages; (3) Complainant did not register the disputed domain name during the sunrise period; (4) Complainant did not do business in Belgium; (5) Complainant did not make any real efforts to consider Respondent’s assertions regarding his legitimate interests in the domain name and good faith, Respondent asserts that Complainant may be found to have engaged in reverse domain name hijacking. 

 

  

FINDINGS

The Panel finds that: (1) the disputed domain name is identical to a mark in which Complainant has rights; (2) Respondent has rights or legitimate interests in the domain name; (3) the domain name was not registered and is not being used in bad faith; and (4) Complainant did not engage in reverse domain name hijacking.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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

 

The Panel concludes that the domain name <assurant.mobi> is, for all intents and purposes, identical to the ASSURANT mark.  The domain name incorporates the mark in its entirety and the addition of the generic top-level domain “.mobi” is without legal significance since the addition of a generic top-level domain is required of domain name registrants.  See Starkey v. Mr. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (finding that the addition of the gTLD “.mobi” should be ignored when deciding a domain name’s confusing similarity).

 

The Panel further finds that Complainant has rights in the ASSURANT mark. Such rights are established through Complainant’s use of, and registrations for, the mark.  The fact that, as alleged by Respondent, Complainant may not be using the mark in Belgium does not support a contrary determination.  The Policy does not require a complainant to use its mark in the territory of a respondent.  It merely requires proof of the establishment of rights in the mark in issue.  Such rights may be established through use of the mark and/or registrations anywhere in the world.  Here the evidence indicates that Complainant owns registrations for the ASSURANT mark in the U.S. and in the Benelux countries and has used the mark in the U.S. 

 

Rights or Legitimate Interests

 

The evidence, specifically the emails set forth in Annexes 31 and 32 to the Response, establishes that, prior to any notice of the instant dispute, Respondent had commenced demonstrable preparations to use the domain name in connection with a bona fide offering of services, within the meaning of paragraph 4(c)(i) of the Policy.  The evidence indicates that Respondent contacted Bureau Van Dijic, a leading IT consultancy company in July 2006, and met with the company in August, September, and October 2006 to engage in in-depth discussions of his “.mobi” projects.  While further negotiations apparently have been postponed pending enhanced availability of “.mobi” technology, the Respondent, nevertheless, may be found to have “commenced demonstrable preparations” to use the domain name.

 

The Panel further concludes that Respondent plans to use the domain name in connection with a bona fide offering of services.   In this regard, the Panel finds that the term “assurant,” as intended to be used by Respondent for a database containing descriptions, photos, therapies, and experiences related to physical injuries caused by sports stress or sports accidents, is being used in a non-trademark manner.  As explained by Respondent,  “[w]e have selected the name ‘ASSURANT’ for our project based on the Dutch meaning of the word (brutal, sassy) referring to the impertinent injury, and the French meaning of the word (insuring, taking care off (sic)) referring to the physiotherapeutic purpose of the website.”[1]

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant has not met is burden of proving that the disputed domain name was registered and is being used in bad faith.  While Complainant asserts that its ASSURANT mark is “well-known” in Belgium, no evidence in support of such assertion is presented beyond its Benelux registration for the mark.[2]  To the contrary, Respondent has presented evidence that the term “assurant” is not associated in Belgium with Complainant.  Moreover, Annex 23, which is a printout from Complainant’s assurant.com website, indicates that “Assurant represents approximately 12,000 employees primarily in North America.” (emphasis added)   Thus, the Panel deems it credible, as alleged by Respondent, that at the time he registered the disputed domain name, he was not aware of the Complainant’s mark and had no intent to disrupt the business of Complainant.

 

The fact that the term “assurant,” as used in the disputed domain name, has generic or descriptive connotations further supports a determination that the domain name was not registered in bad faith.  See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (where the domain name is comprised of a generic term it is difficult to conclude that there was a deliberate attempt to confuse on behalf of respondent); Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic nature of the disputed domain name itself rebuts any allegation by Complainant that Respondent registered or used the disputed domain name in bad faith.”).

 

Reverse Domain Name Hijacking

           

            In view of Complainant’s ownership of a Benelux registration for the mark ASSURANT,

the Panel does not conclude that Complainant is using the Policy in bad faith.  As a

result, the Panel declines to find that Complainant engaged in reverse domain name

hijacking.

 

DECISION

 

In view of Complainant’s failure to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Jeffrey M.  Samuels, Panelist
Dated: March 5, 2007