Sammons Financial Group, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2303002035375
Complainant is Sammons Financial Group, Inc. (“Complainant”), United States of America (“United States”), represented by McKee, Voorhees & Sease PLC, United States. Respondent is Domain Administrator / Fundacion Privacy Services Limited (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <northamericanlifeinsurance.com> (the “disputed domain name”), registered with Media Elite Holdings Limited (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on March 10, 2023; Forum received payment on March 10, 2023.
On Mar 14, 2023, the Registrar confirmed by e-mail to Forum that the disputed domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Media Elite Holdings Limited 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 March 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2023 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@northamericanlifeinsurance.com. Also on March 20, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns North American Company for Life and Health Insurance, among other companies, which has been a leading provider of life insurance and annuities since 1886. Complainant owns numerous federal trademark registrations, common law trademark rights, and the domain name <northamericancompany.com> at which it operates a commercial website.
Complainant has prominently and extensively used, promoted, and advertised its trademarks and domain names. By virtue of these efforts the trademark have become well recognized by consumers as designating Complainant as the source of the goods and services. Complainant has rights in the NORTH AMERICAN trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration No. 6,191,510, registered on November 3, 2020) (hereinafter the trademarks are collectively referred to as the “NORTH AMERICAN Mark”).
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s NORTH AMERICAN Mark as it uses the mark in its entirely while adding the descriptive term “life insurance”, followed by the “.com” generic Top-Level Domain (“gTLD”).
Complainant also claims that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its NORTH AMERICAN Mark in the disputed domain name.
Finally, Complainant submits that Respondent registered and is using the disputed domain name in bad faith as Respondent is using the disputed domain name passively and also resolves to a landing page with pay-per-click hyperlinks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the NORTH AMERICAN Mark based on its registrations with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s NORTH AMERICAN Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name was 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain name is confusingly similar to the NORTH AMERICAN Mark as set forth below.
The Panel finds that Complainant has rights in the NORTH AMERICAN Mark per Policy paragraph 4(a)(i) through its registration of the mark with the USPTO (e.g., United States Registration No. 6,191,510, registered on November 3, 2020). In addition, registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy paragraph 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel further finds that Respondent’s disputed domain name is confusingly similar to Complainant’s NORTH AMERICAN Mark as it consists of the entirety of the NORTH AMERICAN Mark, followed by the descriptive terms “life insurance”, and then is followed by the gTLD “.com”. The addition of a descriptive generic term and a gTLD fail to distinguish a disputed domain name from a trademark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a term and a gTLD; the differences between the disputed domain name and its incorporated trademark are insufficient to differentiate one from the other for purposes of the Policy).
Finally, the addition of a gTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar since the use of a gTLD is a technical requirement. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a disputed domain name is irrelevant to a Policy paragraph 4(a)(i) analysis).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond. In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized, licensed or otherwise permitted Respondent to use its NORTH AMERICAN Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use because Respondent uses the disputed domain name to resolve to a landing page that contains pay-per-click hyperlinks, presumably for monetization.
Moreover, Complainant argues, and the Panel agrees, that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), hosting a parked webpage is not a bona fide offering of goods or services, nor any noncommercial or fair use. See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant. The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides a screenshot of the resolving webpage, which displays parked links. The Panel therefore finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy paragraphs 4(c)(i) and (iii).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith by attracting users for commercial gain to its resolving parked webpage. Under Policy paragraph 4(b)(iv), attracting users to respondent’s website for its own commercial gain while hosting parked links is evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv).”); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy paragraph 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).
Finally, a domain name may be so closely connected with a well-known trademark that its very use by someone with no connection to the trademark owner may support an inference of bad faith. See, e.g., U.S. Smokeless Tobacco Company LLC v. Na Shan, FA 1713085 (Forum Feb. 24, 2017); Altria Group, Inc. & Altria Group Distribution Co. v. Yu Fan / Fanyu, FA 1683563 (Forum Aug. 18, 2016).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <northamericanlifeinsurance.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 1, 2023
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