Travel Insured International, Inc. v. International Medical Group, Inc. c/o David Girot
Claim Number: FA0508000545210
Complainant is Travel Insured International, Inc. (“Complainant”), represented by Elizabeth A. Alquist, of Day, Berry & Howard LLP, CityPlace, Hartford, CT 06103. Respondent is International Medical Group, Inc. c/o David Girot (“Respondent”), represented by Mary Jane Frisby, of Barnes & Thornburg LLP, 11 S. Meridian St., Indianapolis, IN 46204-3535.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <itravelinsured.com>, registered with Register.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Diane Cabell, and David Miranda as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2005.
On August 23, 2005, Register.com confirmed by e-mail to the National Arbitration Forum that the <itravelinsured.com> domain name is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 2005 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on September 19, 2005.
A timely Additional Submission from Complainant was received and determined to be complete on September 26, 2005.
On September 27, 2005, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell and David Miranda as Panelists, and Richard Hill as Presiding Panelist.
A timely Additional Submission from Respondent was received and determined to be complete on September 29, 2005.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent requests that the Panel dismiss the Complaint and find Reverse Domain Name Hijacking.
Complainant, Travel Insured International, Inc., was founded in 1993 and is one of today’s most recognized travel insurance companies, providing a full range of services. Complainant registered the <travelinsured.com> domain name in 1997. It owns the trademark TRAVEL INSURED INTERNATIONAL. This mark was granted in 2004 with a first use date in 1994. The application for registration of the mark was filed in 2003.
The contested domain name <itravelinsured.com>, was registered by Respondent in 2000. Respondent sells travel insurance at this website. Respondent has a registered mark ITRAVELINSURED, issued in 2005 with a first use date in 2000.
Complainant alleges that the contested domain name is confusingly similar to its mark because it differs by the relatively minor addition of the letter “i.” It further alleges that many travel agents have been confused by the contested domain name, and that at least one travel agent was actually confused after being contacted by the Respondent.
Complainant alleges that its own mark has priority over Respondent’s mark, that Respondent’s mark is confusingly similar to its own mark and that Respondent is benefiting from trading on its goodwill. Complainant has initiated various legal actions to cancel Respondent’s mark. Accordingly, argues Complainant, Respondent has no legitimate rights in the contested domain name.
Further, Complainant alleges that Respondent has registered and is using the contested domain name in bad faith, by using it to attract Internet users to its website for commercial gain by capitalizing on the goodwill of Complainant’s mark and on the likelihood of confusion between Complainant’s mark and the contested domain name.
Respondent does not contest most of the factual allegations made by the Complainant. It offers travel and trip-cancellation insurance underwriting and administration services at its website. It is incorporated under the state laws of Indiana as ItravelInsured, Inc.
Respondent denies that the only difference between its mark and Complainant’s mark is the addition of the letter “i.” Complainant’s mark is TRAVEL INSURED INTERNATIONAL, in contrast, Respondent’s domain name is <itravelinsured.com>.
Respondent applied for registration of the mark ITRAVELINSURED in 2004, after the application filed by Complainant for its marks. Respondent notes that, when its mark was granted, the US Patent and Trademark Office did not cite Complainant’s marks. Thus, it alleges, the Patent and Trademark Office did not consider the marks to be confusingly similar.
According to Respondent, it is not surprising that the US Patent and Trademark Office did not consider the marks to be confusingly similar, given the marks’ obvious differences. First, Respondent’s domain name begins with the letter “I,” which transforms the mark’s sound, meaning, connotation, and appearance. The mark suggests to consumers a play on words by creating the phrase “I travel insured.” At the same time, “i” is a common prefix used for services advertised on the Internet to connote the word “information.” Complainant’s mark TRAVEL INSURED INTERNATIONAL has none of these connotations. Thus the letter “i” is integral to Respondent’s mark, as it creates a unique commercial impression and meaning.
Finally, alleges Respondent, the word INTERNATIONAL is the dominant portion of Complainant’s mark, since the words TRAVEL and INSURED contain no trademark significance when used in connection with travel insurance. Respondent’s mark does not contain the word INTERNATIONAL.
Respondent denies that there has been confusion among consumers of travel insurance during the five plus years that the companies have coexisted.
According to Respondent, Complainant’s request for relief must be denied, because Respondent has legitimate rights in the contested domain name. iTravelInsured, Inc. is incorporated under the state laws of Indiana and is a wholly-owned subsidiary of International Medical Group, Inc. Respondent owns a U.S. Trademark Registration for ITRAVELINSURED (Reg. No. 2930426) and has been using the mark in interstate commerce since at least as early as March 28, 2000 in connection with travel and trip-cancellation insurance underwriting and administration services. A trademark registration is grounds for finding legitimate rights in a domain name. See, e.g., Helen of Troy Ltd. v. Mailadmin, Ltd. and Vitali Fed, Case No. D2005-0371 (WIPO Arbitration and Mediation Center).
Respondent admits that Complainant’s trademark registrations suggest that Complainant began using its trademarks before Respondent began using its own, different trademark and domain name. However, because the marks are different, there is no issue of priority. In addition, Respondent denies that it had actual knowledge of Complainant’s domain name <travelinsured.com> at the time it registered <itravelinsured.com>.
Respondent denies that it has or will trade on the goodwill created by Complainant’s marks. Respondent operates a legitimate business, and it uses its website to promote that legitimate business. Respondent trades upon its own registered trademark and the goodwill associated with Respondent’s trademark inures exclusively to the benefit of Respondent.
According to Respondent, the Complaint must fail because Respondent owns legitimate rights in its <itravelinsured.com> domain name. According to the Policy, 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 Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(a) Before any notice to Respondent of the dispute, Respondent’s 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
Respondent satisfies both of these circumstances and more. Respondent has used the <itravelinsured.com> domain name in connection with its website offering bona fide travel insurance services.
Respondent also does business as iTravelInsured, Inc. iTravelInsured, Inc. is the legal name of Respondent’s wholly-owned subsidiary. Therefore, Respondent has common law trademark and trade name rights in the iTravelInsured mark and is known by that name.
Further, Respondent owns a U.S. Trademark Registration for its ITRAVELINSURED mark, which is identical to its domain name. A registration on the principal register of trademarks of the U.S. Patent and Trademark Office is “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” 15 U.S.C. § 1057(b).
Moreover, the Patent and Trademark Office did not cite either of Complainant’s marks against Respondent’s application to register ITRAVELINSURED. Because Respondent has shown that it is the registered proprietor of a U.S. Trademark for ITRAVELINSURED, Respondent has a legitimate right in respect of the domain name in dispute. See Prisma Presse v. Valco S.R.L. Unipersonale (WIPO Case No. DBIZ2002-00271, August 19, 2002).
C. Additional Submissions
Complainant alleges that there is no evidence to suggest that the US Patent and Trademark Office actually considered whether its marks are confusingly similar to Respondent’s mark and reaffirms its contention that the marks are indeed similar.
Complainant contests that Respondent has been known by the name of “iTravelInsured” for the entire time that the domain name has been registered, stating that this name was first used in 2004. Prior to that time, the name of the company was Global Marketing Connections Group (GMCG). Furthermore, at the time that the domain name was registered, William Dismore, a current senior manager with iTravelInsured, Inc. and previously the President of GMCG, was fully aware of the existence of Travel Insured International and its position in the marketplace. Mr. Dismore knew or should have known of Travel Insured’s common law rights in the trademark TRAVEL INSURED. These facts provide additional support for the conclusion that Respondent’s predecessor, GMCG, registered the domain name in bad faith.
Concerning the matter of Reverse Domain Name Hijacking, Complainant alleges that it is simply not plausible to find that the Complainant initiated this proceeding in bad faith in the face of evidence of actual confusion in the industry caused by Respondent’s use of Complainant’s mark in its domain name in direct competition with Complainant. Further evidence of Complainant’s good faith in bringing this action may be found in the legal actions filed in US courts against the Respondent, alleging various infringements of trademark and unfair competition laws.
Respondent contests the allegation that it was not known by the name “iTravelInsured” until 2004. Although the corporate name of the original registrant of <itravelinsured.com> was Global Marketing Connections Group, Inc. (GMCG), the company did not do business under that name at the <itravelinsured.com> website. Instead, it operated using the d/b/a “iTravelInsured.Com” from the time it first launched the <itravelinsured.com> website in early 2000. After International Medical Group, Inc. purchased iTravelInsured.Com in 2004, the company’s corporate name was changed to iTravelInsured, Inc. However, at all times that the company has been in operation, it has used the name “iTravelInsured” in connection with its business.
Respondent denies that it knew about Travel Insured International when the domain name was registered, and that therefore the registration was made in bad faith. The “evidence” for this assertion is the statement of Travel Insured International’s Peter Gehris concerning an alleged meeting that Mr. Gehris attended with Mr. Dismore “sometime in the 1999-2000 timeframe.” This vague, unfounded, and unsupported statement is hardly evidence to show what Mr. Dismore “knew,” or when he knew it. It certainly is not evidence that the domain name was registered in bad faith on January 19, 2000. In fact, Mr. Dismore emphatically disagrees that the domain name was registered for any improper purpose.
Respondent has rights in the registered trademark ITRAVELINSURED and conducts a legitimate business using the contested domain name.
Complainant knew of these rights when it initiated these proceedings.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel need not consider this element, for the reasons set forth below.
The domain name is the subject of a US federal trademark registration, owned by the Respondent, whose mark exists independently from Complainant’s mark. The fact that the Complainant is contesting the validity of the Respondent’s mark is irrelevant in these proceedings.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc ). This report states at paragraph 172:
… good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the procedure.
The domain name was registered and is being used to operate a legitimate business.
Therefore, in accordance with Paragraph 4(c) of the Policy, the Respondent has a legitimate interest in the contested domain name.
Since the Panel holds that the Respondent has a legitimate interest in the contested domain name, it also holds that its registration and use were not made in bad faith.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express D2000-0565 (WIPO, July 17, 2000).
A majority of the Panel notes that Complainant clearly indicates in its Complaint that is was aware of Respondent’s registered mark, which is identical to the contested domain name. Thus, it should have been aware at the outset that its Complaint must fail.
Further, notes the majority, after Respondent stressed that it had rights and legitimate interests in the contested domain name in its Response, Complainant persisted by filing an additional submission, in which submission it made allegations concerning Respondent’s good faith.
As pointed out above, the scope of proceedings under the Policy is narrow, and this is not the venue in which to resolve complex issues of trademark priority, trademark interference, or unfair competition. Such matters must be left to national courts.
Further, Complainant can get relief concerning the use of the contested domain name from national courts, if it believes that such use violates national trademark or unfair competition laws. Indeed, according to the documents submitted by Complainant to this Panel, Complainant has asked national courts to prevent Respondent from using the contested domain name.
A majority of the Panel holds that bringing to this venue matters which are clearly outside the narrow scope of the policy—in the face of clear knowledge that the Respondent has a registered trademark for the disputed domain name—and persisting in the action by filing an additional submission, constitutes an improper action, and harassment, which amount to Reverse Domain Name Hijacking. One member of the Panel disagrees with the finding of Reverse Domain Name Hijacking.
For the reasons given above, the Panel concludes that relief shall be DENIED. The Complaint is DISMISSED.
A majority of the Panel concludes that the Complainant has engaged in Reverse Domain Name Hijacking.
Richard Hill, Presiding Panelist
Diane Cabell & David Miranda,
Dated: 11 October 2005
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