DECISION

 

Snow Fun, Inc. v. James O'Connor

Claim Number: FA0106000097668

 

PARTIES

Complainant is Snow Fun, Inc., Centerville, OH, USA (“Complainant”) represented by Theodore D. Lienesch, of Thompson Hine LLP.  Respondent is James O'Connor, San Francisco, CA, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <termquoteamerica.com> registered with Network Solutions, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2001; the Forum received a hard copy of the Complaint on June 15, 2001.

 

On June 20, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <termquoteamerica.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 June 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 10, 2001 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@termquoteamerica.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 17, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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

The <termquoteamerica.com> domain name is confusingly similar to Complainant’s federally registered trademark.

 

Respondent has no rights or legitimate interests in the <termquoteamerica.com> domain name.

 

Respondent registered and used the <termquoteamerica.com> domain name in bad faith.

 

B. Respondent

No response was received from Respondent.

 

FINDINGS

Complainant owns a federal registration for the mark TERMQUOTE.  Complainant has used its mark in connection with insurance consulting and brokering services since April 15, 1987. 

 

Respondent registered the disputed domain name on August 25, 1999.

 

At Respondent’s <termquoteamerica.com> domain name, Respondent has created a Website that provides insurance brokering and consulting services identical to the services for which Complainant’s TERMQUOTE trademark is registered.

 

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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

Respondent’s domain name <termquoteamerica.com> incorporates Complainant’s federally registered TERMQUOTE mark in its entirety.  The addition of the geographic term “America” does not remove the domain name from the confusingly similar realm of Policy ¶ 4(a)(i).  See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."); see also  VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark).

 

Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has not made a bona fide offering of goods in connection with the domain names pursuant to Policy ¶ 4(c)(i), because Respondent offers similar services as Complainant and operates under a name confusingly similar to Complainant’s mark.  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).

 

Respondent is not a licensee or in anyway authorized to use Complainant’s TERMQUOTE mark.  Respondent only offers services under the name Jim O'Connor, therefore, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

Additionally, Respondent is intentionally attempting to divert Internet consumers to its own commercial site, and such use is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

 

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <termquoteamerica.com> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent has shown bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website and services.  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

 

Accordingly, it is Ordered that the domain name <termquoteamerica.com> be transferred from Respondent to Complainant.

 

 

Hon Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: July 23, 2001