DECISION

 

New York Life Insurance Company v. Kristen Organ / Eric Otterman

Claim Number: FA2311002073155

 

PARTIES

Complainant is New York Life Insurance Company ("Complainant"), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Kristen Organ / Eric Otterman ("Respondent"), Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <mainstaynewyorklife.com> and <nylifeuniversity.com>, both registered with Wix.com Ltd.

 

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 30, 2023; Forum received payment on November 30, 2023.

 

On December 6, 2023, Wix.com Ltd. confirmed by e-mail to Forum that the <mainstaynewyorklife.com> and <nylifeuniversity.com> domain names are registered with Wix.com Ltd. and that Respondent is the current registrant of the names. Wix.com Ltd. has verified that Respondent is bound by the Wix.com 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 December 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2024 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@mainstaynewyorklife.com and postmaster@nylifeuniversity.com. Also on December 11, 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 January 3, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."  

 

There are two domain names in dispute and the Registrar disclosed the names of two different domain name holders – Kristen Organ and Eric Otterman. Notably, the registrant billing contact for both domain names is Joseph Pepe.  

 

Despite paragraph 3(c), the Panel has a discretion to allow this one action against both domain names if it can reasonably be inferred that the names are effectively controlled by one person or entity, which is operating under several aliases. Complainant's submission is that this is so because both (i) were registered using the same alias and with the same registrar, namely, Wix.com Ltd. and REDACTED FOR PRIVACY (DT); (ii) have the same registrant billing information and addresses; (iii) were registered in close time proximity of each other in November 2023, and (iii) both have been used with a corresponding email address.

 

The Panel finds sufficient evidence that the domain names are controlled and used by a single person or entity having no connection with the real persons named as the holders. In these circumstances the Panel determines under Rule 3 that these proceedings can continue in respect of both disputed domain names. Accordingly, references herein to them are simply as "Respondent".

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in MAINSTAY, NEW YORK LIFE and NYLIFE. It holds national registrations for those trademarks and asserts that the domain names are confusingly similar to its trademarks.

 

Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain names.

 

Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant provides insurance and financial services and is the owner of the trademarks, MAINSTAY, NEW YORK LIFE and NYLIFE, which are registered with the United States Patent & Trademark Office ("USPTO") as Reg. No. 1,482,681, 1,750,395 and

1,481,871, respectively.

2.       the disputed domain names were registered in November, 2023, much later than registration of all of the trademarks;

3.       the <mainstaynewyorklife.com> domain name resolves to a

website with an image of Complainant's office building in New York and links to Complainant's business websites;

4.       the <nylifeuniversity.com> domain name has not been used in relation to a website;

5.       both domain names have been used to send emails posing as having originated from Complainant; and

6.       there is no relationship between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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(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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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").

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant provides evidence of its registration of MAINSTAY, NEW YORK LIFE and NYLIFE with the USPTO, a national trademark authority, and has thus established rights in those marks.

 

The arguments of confusing similarity presented in the Complaint are not convincing, but the Panel has made its own appraisal and finds that the domain name <nylifeuniversity.com> is confusingly similar to the NYLIFE trademark. Although that trademark is not particularly distinctive, neither is the term, "university", nor the gTLD, ".com" and the Panel finds that the trademark retains some memorable character in the overall expression (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."); Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018): "Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

Complainant seems to imply that the <mainstaynewyorklife.com> domain name is identical to its trademarks, MAINSTAY and NEW YORK LIFE, because "the only difference between these Marks and the Domain Name is the addition of the generic top-level domain". The submission ignores the thorny question which has engaged UDRP panelists for two decades now, namely, whether a domain name comprised of a combination of Complainant's marks can be considered to be confusingly similar to those individual marks.  Most panelists approach this problem in the same way as the WIPO Jurisprudential Overview 3.0 [para. 1.12] summarises the consensus viewpoint to the related question: Is a domain name consisting of the complainant's mark plus a third-party trademark confusingly similar to the complainant's trademark?

 

Where the complainant's trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant's mark under the first element.

The Panel takes the view that the registered trademark MAINSTAY is recognizable within the <mainstaynewyorklife.com> domain name and so the domain name is confusingly similar to that trademark.

 

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, Case No. D2000 0624 (WIPO Aug. 21, 2000).

 

There is no suggestion that Respondent might be commonly known by the disputed domain names, nor that Respondent has any trademark rights. One domain name has not been used in relation to a website and so there has been no bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  The other domain name resolves to a site creating the impression of an association with Complainant's business and carrying links to Complainant's authentic sites.  Both domain names have been used to send emails posing as having originated from Complainant. In particular, the email address, IntunePortal@mainstaynewyorklife.com, has been used to send messages of a frivolous if not demeaning nature posing as having come from Complainant's MD, and the Complainant asserts (without proof) that the email address, SIRU@nylifeuniversity.com, email has been used "in an attempt to send another email to the Complainant's agents and employees."

 

The Panel finds that a prima facie case has been made that Respondent lacks rights or a legitimate interest in the disputed domain names (see, for example, Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) : "Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!"; Infineon Technologies AG v. mustafa mushari, FA1505001619868, (Forum June 27, 2015) finding respondent's fraudulent emails demonstrated no rights or legitimate interest in domain).

 

The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.

 

The scenarios of bad faith registration and use provided in paragraph 4(b) of the Policy are of no real assistance in this case. However, the Panel finds, as separate matters, registration in bad faith and use in bad faith. The Panel finds that the domain names were registered in bad faith because, both by the described website content and the described emails, Respondent has plainly targeted Complainant's business and trademarks. Further, the use of the emails has been in bad faith since the emails are being sent to somehow disrupt Complainant's business.

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <mainstaynewyorklife.com> and <nylifeuniversity.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated: January 7, 2024