Progressive Casualty Insurance Company v. PAI
Claim Number: FA0604000690807
Complainant is Progressive Casualty Insurance Company (“Complainant”), represented by Brandt W. Gebhardt of Baker & Hostetler LLP, 3200 National City Center, 1900 East 9th Street, Cleveland, OH, 44114. Respondent is PAI (“Respondent”), 180 New Montgomery St., San Francisco, CA, 94105.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <progressiveautoinsurance.com>, registered with Pairnic.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 25, 2006; the National Arbitration Forum received a hard copy of the Complaint May 4, 2006.
On April 27, 2006, Pairnic confirmed by e-mail to the National Arbitration Forum that the <progressiveautoinsurance.com> domain name is registered with Pairnic and that Respondent is the current registrant of the name. Pairnic verified that Respondent is bound by the Pairnic registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 25, 2006, 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@progressiveautoinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <progressiveautoinsurance.com>, is confusingly similar to Complainant’s PROGRESSIVE mark.
2. Respondent has no rights to or legitimate interests in the <progressiveautoinsurance.com> domain name.
3. Respondent registered and used the <progressiveautoinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Progressive Casualty Insurance Company,
provides automobile insurance underwriting, adjusting and claims processes,
insurance premium quoting and the provision of insurance-related information
and services over the Internet. In
connection with these services, Complainant holds numerous trademark
registrations with the United States Patent and Trademark Office (“USPTO”), including
the PROGRESSIVE mark (Reg. No. 1,844,695 issued July 12, 1994).
Respondent registered the <progressiveautoinsurance.com> domain name September 12, 2003. The disputed domain name redirects Internet users to a third-party commercial website that offers services that directly compete with Complainant.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 established using extrinsic evidence in this proceeding that it has rights in the PROGRESSIVE mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant asserts that the disputed domain name, <progressiveautoinsurance.com>,
is confusingly similar to its PROGRESSIVE mark. The disputed domain name features Complainant’s PROGRESSIVE mark
in its entirety and adds the descriptive terms “auto” and “insurance” along
with the generic top-level domain “.com.”
Pursuant to Policy ¶ 4(a)(i), the Panel finds that addition of generic
terms that describe Complainant’s business and addition of the generic
top-level domain “.com” do not distinguish the disputed domain name from
Complainant’s mark. See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business) see also Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the disputed domain name. Complainant alleges that Respondent lacks rights and legitimate interest in the <progressiveautoinsurance.com> domain name. The initial burden rests with Complainant to establish a prima facie case, but once Complainant has done so, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent lacks rights and legitimate interests in the <progressiveautoinsurance.com>
domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as
an admission of the allegations contained in the Complaint.”). However, the Panel examines the record to
determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
The <progressiveautoinsurance.com> domain name
redirects Internet users to a third-party commercial website that offers
services that directly compete with Complainant. Such use of the confusingly similar domain name is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is
not a legitimate non-commercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks); see
also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb.
Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate
interests in a domain name that it used to redirect Internet users to a
commercial website as part of that website’s affiliate program, where the
resultant website contained banner ads as well as various links to offers for
free merchandise, including merchandise from the complainant's competitor).
Additionally, Respondent registered the disputed domain name with under the administrative contact “PAI” and no evidence in the record suggests that Respondent is commonly known by the <progressiveautoinsurance.com> domain name. Thus, on the face of the record, Respondent is not commonly known by and has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith. Complainant showed that Respondent is using
the <progressiveautoinsurance.com> domain name to redirect
Internet users to a third-party commercial website that offers services that
directly compete with Complainant. The
Panel finds Respondent’s registration and use of a confusingly similar domain
name to redirect Internet users to a competing third-party website constitutes
disruption under to Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Finally, based on uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
referral fees from the third-party websites to which it redirects Internet
users seeking Complainant’s goods and services. Additionally, since the <progressiveautoinsurance.com>
domain name contains Complainant’s mark in its entirety, the Panel infers that
it is likely that Respondent’s website causes confusion as to Complainant’s
sponsorship of or affiliation with the resulting website. The Panel therefore
concludes that the registration and use of a confusingly similar domain name to
redirect Internet users to a competing third-party website in exchange for
commercial gain constitutes bad faith under Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <progressiveautoinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 13, 2006.
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