The Travelers Indemnity Company v. Ryan A. Starzyk
Claim Number: FA1807001796436
Complainant is The Travelers Indemnity Company (“Complainant”), represented by Caroline Ahn of The Travelers Indemnity Company, Connecticut, USA. Respondent is Ryan A. Starzyk (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <travelersinsurance.app>, registered with Google LLC.
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.
Hector Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2018; the Forum received payment on July 12, 2018.
On July 13, 2018, Google LLC confirmed by e-mail to the Forum that the <travelersinsurance.app> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 July 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2018 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@travelersinsurance.app. Also on July 16, 2018, 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.
A timely Response was received and determined to be complete on July 17, 2018.
On July 20, 2018 an Additional Submission by Complainant was received.
On July 23, 2018 an Additional Submission by Respondent was received.
On July 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hector Ariel Manoff 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1- Complainant, along with its affiliated entities, is an international property and liability insurance organization, and is a leading provider of property and casualty insurance, surety products, and risk management services to a wide variety of businesses, government agencies/departments, associations, and individuals.
2- Complainant has rights in the TRAVELERS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”)
3- Respondent’s <travelersinsurance.app> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the registered mark in its entirety in the disputed domain name plus a descriptive term and a generic top-level domain (“gTLD”).
4- Respondent lacks rights and legitimate interests in the <travelersinsurance.app> domain name because Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use the mark in any way.
5- Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to redirect users to Respondent’s inactive webpage.
6- Respondent registered and uses the <travelersinsurance.app> domain name in bad faith.
7- Respondent uses the disputed domain name to divert users to Respondent’s own commercial webpage.
8- Respondent offered to sell the domain name to the Complainant in excess of reasonable out-of-pocket costs.
9- Respondent had actual knowledge of Complainant’s rights in the mark prior to registration.
B. Respondent
1- Respondent’s <travelersinsurance.app> domain name is not confusingly similar to Complainant’s mark.
2- Complainant has rights in the TRAVELERS mark but does not have ownership rights of a trademark service with the TRAVELERSINSURANCE mark.
3- The unregistered mark contains the generic terms “travelers” and “insurance.”
4- Respondent has rights and legitimate interests in the <travelersinsurance.app> domain name because Respondent purchased it legally and without consequence.
5- Respondent is using the domain name to develop an appropriate approach for a business opportunity.
6- Respondent has registered and uses the <travelersinsurance.app> domain name in good faith.
7- Respondent purchased the domain name for the speculation in the future value of the domain name.
8- Respondent’s offer to sell the domain name to the Complainant was a legitimate business proposal that broke no laws and should not constitute bad faith. Rather, as acknowledged by Complainant, Respondent’s offer did not constitute bad faith, as the offer would equate to what Complainant earns every seven (7) minutes of every single day.
C. Additional Submissions
Complainant submitted additional material consisting in:
1- A copy of a Trademark registration for TRAVELERS INSURANCE in United Kingdom
2- A screenshot of the search results for “travelers” and “insurance” in Google
3- Screenshots of websites where one may register an .app domain name.
Respondent submitted additional material stating that:
1- The Domain Name in question, <travelersinsurance.app> was not in fact registered in an effort to exercise “Bad Faith” and Respondent takes issue with this claim and further asks the panel to reject Complaint’s request.
2- Respondent re-acknowledges the registrar of the Domain Name is Google Inc. The provided reference to “GoDaddy” as the pricing for the Domain Name holds no bearing in this proceeding since Complainant even acknowledged purchase via Google.
3- Respondent acknowledges ownership of trademark and trade name “TRAVELERS” but not “TRAVELERSINSURANCE.”
4- A screenshot of the search results for domain names with the terms “travelersinsurance”.
Complainant, The Travelers Indemnity Company has rights in the TRAVELERS mark and uses it in connection with insurance services. Respondent registered the disputed domain name <travelersinsurance.app> which is confusingly similar and may be associated with Complainant’s mark. Respondent has neither filed evidence to prove legitimate interest on the domain name nor a bona fide offering of goods or services or a legitimate noncommercial or fair use.
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.
Complainant has rights in the TRAVELERS mark based upon its registration of the mark with the USPTO. Registration with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides information from the Trademark Electronic Search System which shows Complainant’s registration of the TRAVELERS mark (e.g., Reg. No. 1,611,053 registered Aug. 28, 1990). See Compl. Ex. H. Therefore, the Panel finds that the Complainant has rights in the TRAVELERS mark according to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <travelersinsurance.app> domain name is confusingly similar to the TRAVELERS mark because Respondent incorporates the entire mark in the domain name plus a descriptive term and a gTLD. The addition of a descriptive term and a gTLD are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”). Here, Respondent includes the entire TRAVELERS mark in the disputed domain name plus the descriptive term “insurance” and the “.app” gTLD. Accordingly, the Panel finds that Respondent’s <travelersinsurance.app> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Moreover, Complainant owns a Trademark registration in United Kingdom that includes both terms: “TRAVELERS INSURANCE”.
While Respondent contends that the <travelersinsurance.app> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i)); see also American International Group, Inc. v. Sidney Parfait, FA 0603000670059 (Forum May 9, 2006) (finding that the respondent’s domain name incorporates Complainant’s mark in its entirety and adds the term “insurance”—and moreover, that the term “insurance” describes Complainant—but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
The Panel finds that Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <travelersinsurance.app> domain name because Respondent is not commonly known by the disputed domain and is not licensed nor authorized to use the TRAVELERS mark in any way.
Lack of authorization from a complainant to use its mark supports a finding that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The Panel notes that Respondent originally used a privacy service in registering its <travelersinsurance.app> domain name, which was lifted at the initiation of this Proceeding. See Compl. Ex. B (listing “REDACTED FOR PRIVACY” as registrant). As a result, the Panel notes that Respondent reached out to Complainant for the purposes of selling the disputed domain name and identified itself as “Ryan A. Starzyk.” See Compl. Ex. K. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant alleges the Respondent fails to use the <travelersinsurance.app> domain name in connection with a bona fide offering of goods and services of for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain name to divert users to Respondent’s own webpage. Use of a domain name to divert internet users to Respondent’s webpage may not be considered a bona fide offering nor a legitimate use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the webpage associated with the disputed domain names which show Respondent redirecting internet users to a webpage displaying the message “Our New Site is Coming Soon Stay Tuned!” See Compl. Ex. J. Therefore, the Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Next, Complainant argues Respondent registered and uses the <travelersinsurance.app> domain name in bad faith because Respondent uses the disputed domain name to redirect users to its own commercial webpage. Use of a domain name to redirect internet users to a respondent’s commercial webpage may support a finding of bad faith under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant provides screenshots of the webpage associated with the disputed domain name which show the domain name redirects Complainant’s potential customers to a placeholder page for Respondent’s own alleged commercial website. See Compl. Ex. J. Consequently, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TRAVELERS mark prior to registering the disputed domain name. A respondent may be presumed to have actual knowledge of complainant’s rights in a mark where the mark is famous under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant claims it has been using the TRAVELERS mark in connection with its insurance services for over 150 years. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the TRAVELERS mark prior to registration and therefore Respondent registered and uses the disputed domain name in bad faith according to Policy ¶ 4(a)(iii).
The Panel finds that Complainant 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 <travelersinsurance.app> domain name be TRANSFERRED from Respondent to Complainant.
Hector Ariel Manoff, Panelist
Dated: August 6, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page