Federated Mutual Insurance Company v. Dealwave
Claim Number: FA1503001612248
Complainant is Federated Mutual Insurance Company (“Complainant”), represented by David D. Axtell of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Dealwave (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwfederatedinsurance.com>, registered with Fabulous.com Pty Ltd.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2015; the Forum received payment on March 31, 2015.
On April 1, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <wwwfederatedinsurance.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwfederatedinsurance.com. Also on April 2, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the FEDERATED INSURANCE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,617,934, registered Oct. 16, 1990). Complainant uses the FEDERATED INSURANCE mark in connection with its insurance products and services. The <wwwfederatedinsurance.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name contains Complainant’s mark in full, removes the space between “Federated” and “Insurance,” adds the prefix “www,” and inserts the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant is the owner of the federally registered trademark, and has the exclusive right to use the mark. Further, Respondent lacks rights or legitimate interests in the <wwwfederatedinsurance.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that features competing hyperlinks.
Respondent has engaged in bad faith registration and use of the <wwwfederatedinsurance.com> domain name. Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark, in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <wwwfederatedinsurance.com> domain name was registered November 23, 2005.
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."
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.
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.”).
Complainant asserts that it owns the FEDERATED INSURANCE mark through its registration with the USPTO (e.g., Reg. No. 1,617,934, registered Oct. 16, 1990). Complainant contends that it uses the FEDERATED INSURANCE mark in connection with its insurance products and services. Past panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
The <wwwfederatedinsurance.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name contains Complainant’s mark in full and adds the prefix “www”. Previous panels have found that the addition of the prefix “www” does not distinguish a disputed domain name from a registered mark, and leads to confusing similarity. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). Therefore, the Panel finds the <wwwfederatedinsurance.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that it is the owner of the federally registered trademark, and has the exclusive right to use the mark. Although Complainant makes no mention that Respondent is not “commonly known by” in its Complaint, the Panel notes that the WHOIS information for the disputed domain name lists ”Dealwave” as the registrant of record. Previous panels have considered WHOIS information as one factor for determining whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, the Panel finds that Respondent is not commonly known by the <wwwfederatedinsurance.com> domain name, and lacks rights to the disputed domain name under Policy ¶ 4(c)(ii).
Further, Complainant asserts that Respondent lacks rights or legitimate interests in the <wwwfederatedinsurance.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that Respondent’s disputed domain name resolves to a website that features competing hyperlinks. The Panel notes that the disputed domain name contains links such as “Health Insurance,” “Dental and Medical Insurance,” “Cheapest Health Insurance, “ and “Low Cost Health Insurance.” Prior panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel concludes that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further agrees that as Respondent presumably attempts to profit through click-through fees, there is no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s disputed domain name resolves to a website displaying links that directly compete with Complainant. The Panel again notes that Respondent’s resolving website displays links related to medical and health insurance. Previous panels have found that the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). This Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark, in violation of Policy ¶ 4(b)(iv). Complainant states that Respondent’s website features hyperlinks, through which Respondent makes money from individuals who click on the offered search links. Prior panels have found that using a confusingly similar disputed domain name to resolve to a website displaying pay-per-click links, presumably for the purpose of earning revenue for respondent, constitutes bad faith. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel therefore finds that Respondent’s actions also indicate bad faith pursuant to Policy ¶ 4(b)(iv).
Thus, Complainant has also 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 <wwwfederatedinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 14, 2015
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