ULLICO Inc. v SF&C Insurance Associates, Inc.

DECISION

ULLICO Inc. v. SF&C Insurance Associates, Inc.

Claim Number: FA0109000099659

PARTIES

The Complainant is ULLICO Inc., Washington, DC ("Complainant") represented by John W. Behringer, of Fitzpatrick, Cella, Harper & Scinto. The Respondent is SF&C Insurance Associates, Inc., Townson, MD ("Respondent")represented by Ned T. Himmelrich, of Gordon, Feinblatt, Rothman, Hoffberger & Hollander, LLC.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <unionlaborlife.com>,<unionlaborlife.org>,<unionlaborlife.net>, registered with Network Solutions, Inc..

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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 31, 2001; the Forum received a hard copy of the Complaint on September 4, 2001.

On September 6, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <unionlaborlife.com>,<unionlaborlife.org>,<unionlaborlife.net> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 September 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2001 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@unionlaborlife.com, postmaster@unionlaborlife.org, postmaster@unionlaborlife.net by e-mail.

A timely response was received and determined to be complete on October 16, 2001.

An additional Submission was received October 24, 2001. This submission was deemed to be timely.

On October 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.

On October 30, 2001, the Forum notified the parties of a request for additional information from the Panel, that request being:

In accordance with Paragraph 12 of the ICANN Rules, the Panel requests the Respondent to provide by Monday November 5, 2001 the following:

1) A sworn affidavit from Mr. Michael Motsko, stating whether or not he registered in April 1999, or on another date, the domain name <laborunionlife>; and, if not, why not.

2) A sworn affidavit from Mr. Jim Franzoni, stating whether or not in April 1999, or on another date prior to the filing of the Complaint, he knew of the company ULLICO, Inc. and of its activities; and also stating whether or not, in April 1999, or on another date, he envisaged, contemplated, or foresaw that ULLICO, Inc. would subsequently make an offer to buy one or more of the contested domain names.

Attention is drawn to Paragraph 14(b) of the Rules, under which the Panel may draw such inferences as it considers appropriate from any failure to comply with this request.

On November 5, 2001, the Respondent sent the requested sworn affidavits. This submission was deemed to be timely.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The domain name <unionlaborlife.com> is confusingly similar, if not identical, to the UNION LABOR LIFE trade name/trademark owned by the complainant and used by its subsidiary.

The Respondent has no rights or legitimate interests in the domain names <unionlaborlife.com>, <unionlaborlife.org>, or <unionlaborlife.net>, because:

none of these domain names resolves to an active website
the domain names do not reflect a trademark or trade name by which the Respondent is commonly known;
the Respondent is not a licensee of the Complainant or any of its subsidiaries.

The Respondent registered and is using the disputed domain names in bad faith because:

it must have been aware of the Complainant’s activities and its trademark;
it registered the domain names for the primary purpose of selling it to the trademark owner (the Complainant), for consideration in excess of documented out-of-pocket costs directly related to the domain name;
the Complainant is denied the use of domain names clearly reflecting the UNION LABOR LIFE trademark/trade name that it has continuously and diligently used in its business and advertising for decades;
confusion in the marketplace and the industry would almost certainly result if the Respondent were to actually use the disputed domain names: interested consumers and other companies, upon seeing "unionlaborlife" in a domain name, would surely expect the website to be sponsored or licensed by, or otherwise associated with, The Union Labor Life Insurance Company and ULLICO (the Complainant). Business that might have gone to ULLICO would be improperly diverted to SF&C (the Respondent).

B. Respondent

The Complainant does not have the exclusive use of the common words "union", "labor", or "life". Its trademark is for a logo containing those words and the words "insurance company".

Furthermore, the test of confusing similarity is not made in a vacuum comparing only the two names in question. It is well established that the "strength" of a trademark is relevant and consumers are not confused by multiple third parties using "weak" marks. A mark can be weak because the words used are descriptive of the goods/services offered, or are extensively used in the industry. Trademark law understands there is no confusing similarity among weak marks, even if they are used by different third parties for similar goods/services.

The Respondent has the right and legitimate interest to use the words "union," "labor" and "life" in its domain name because it is in the business of selling life insurance to members of labor unions.

The agent who registered the contested domain names for the Respondent also registered other domain names that he thought would be of interest to the Respondent. The agent chose names reflective of the Respondent’s business and at the time of choosing the names had no knowledge of the Complainant or its alleged use of the phrase "union labor life" as a trademark.

C. Additional Submissions

The Complainant argues that the Respondent has made no demonstrable preparations to use the disputed domain names, and that use of a domain name that identifies its competitor is in bad faith and would create confusion.

Complainant further alleges that while the Respondent’s agent may have been unaware of the Complaint’s trademark UNION LABOR LIFE, the Respondent itself must have been aware of this mark because it is in the same line of business as the Complainant and the Complainant is a very well known national life insurance company for union members. Complainant notes that in accordance with NSI’s service agreement, a principal is bound by the acts of its agent. Thus the Respondent should have cancelled the registration for the disputed domain names once it learned about them.

In his sworn affidavit of November 5, 2001, Mr. Jim Franzoni states for the Respondent:

As to the question of whether or not in April 1999, or on another date prior to the filing of the Complaint I knew of ULLICO, Inc. and its activities, I was aware of the company commonly called UILLICO, and had some, but by no means abundant, knowledge of its activities. However, I knew the company to operate, use and predominantly focus on the name ULLICO. What limited knowledge I have (and had in April 1999) of that company in my mind relates to that company operating under the name ULLICO, and not as "Union Labor Life". … My thought and knowledge had been that ULLICO was the company’s trademark, as it was derived from the first letters of "union", "labor" and "life". The words "union", "labor" and "life" did not strike me as its trademark.

As to whether or not in April 1999 or on any other date I envisaged, contemplated or foresaw that ULLICO, Inc. would subsequently make an offer to buy one or more of the contested domain names, I never had any notion before receiving the recent Complaint that ULLICO would want to use or buy from SF&C [the Respondent] these domain names, the only exception to this is during the very brief period in the midst of the conversation in June 2000 when a ULLICO representative called me.

And in his sworn affidavit of November 5, 2001, the Respondent’s agent Mr. Michael Mosko states:

… at the time I selected domain names for SF&C [the Respondent] I did not register the domain name laborunionlife for SF&C. Frankly, it never crossed my mind that such a combination of words was any more or less important or relevant than the names I chose, all of which included at least one of the words "union", "labor" or "life" (other than the two where my focus was on the phrase "2000"). There is an unlimited array of domain names and word combinations that I likewise did not choose at that time. No inference should be drawn about some perceived intention to infringe from my not having selected certain names, including laborunionlife. The name laborunionlife did not come into my mind.

Mr. Mosko goes on to explain that at the time he registered the contested domain names, he was managing partner of a company called UnionNet, so the word "union" was predominant in his mind. Mr. Mosko adds that at that time he often referred to the "Union Labor" market as being part of his target customer base. Finally, Mr. Mosko states that the current common term for an organization of workers is "union", even if in the past the more common term was "labor union". Thus, alleges Mr. Mosko, the phrase "laborunionlife" would not have occurred to him.

FINDINGS

Since 1925, The Union Labor Life Insurance Company (Complainant), based in Washington, DC, has continuously used the name Union Labor Life in connection with the underwriting of group and individual life and health insurance plans and annuity products. Union Labor Life is used both as a trademark for such underwriting services and as a trade name for the company.

The Complainant has been and continues to be often referred to in the trade and in the media as Union Labor Life.

The Complainant is the USA’s largest insurance company specializing in the needs of union members. It is active in all 50 states.

On April 11, 1999, SF&C Insurance Associates, Inc. (SF&C) (Respondent) registered the domain name <unionlaborlife.com>. SF&C also registered the domain names <unionlaborlife.org> and <unionlaborlife.net> on June 1, 2000. The Respondent is an insurance agency in Baltimore, Maryland. As part of its business, it offers insurance to labor union members.

In June 2000, a representative of the Complainant called the Respondent to discuss the disputed domain names. During this conversation, the Complainant enquired if the disputed domain names were for sale and the Respondent replied that a sale could be envisaged for a price of US dollars 75,000.

DISCUSSION

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 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 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.

Identical and/or Confusingly Similar

The Complainant has established clearly that it holds at least common law rights to the trademark UNION LABOR LIFE.

The Respondent is under the mistaken impression that this Panel is bound by US trademark law when determining the issue of confusing similarity. Such is not the case. Indeed Paragraph 15(a) of the Policy requires the Panel to:

decide a complaint on the basis of … these Rules and any rules and principles of law that it deems applicable.

That is, the Panel has broad latitude to adopt whatever criterion for confusion that it considers appropriate.

Panels have consistently held that strict application of the confusion criteria arising out of national trademark laws is not appropriate, and that a broader notion of confusion should be used in these proceedings.

This principle is well stated in WIPO case D2000-0047 <eautolamps.com>:

When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar. Accordingly, the Panel holds that Complainant has satisfied the first prong of the ICANN test.

The Panel therefore finds that the Complainant has met its burden of proof and finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

Rights or Legitimate Interests

In response to the Complainant’s allegation that the Respondent has made no demonstrable preparations to use the domain name, the Respondent replies that it intends to use the name in the future because it is in the business of selling life insurance to labor union members.

However, the Respondent has not presented, in this manner, convincing evidence of the demonstrable preparations for use required to invoke Paragraph 4(c)(i) of the Policy.

But Paragraph 4(c) of the Policy merely lists particular circumstances, without limitation.

Thus the question facing this Panel is whether the mark UNION LABOR LIFE is sufficiently well known and unique that the Respondent cannot possibly have a legitimate interest in making use of those words in order to promote its own insurance sales activities.

The Complainant has argued that it is so well known that any use of the words UNION LABOR LIFE by the Respondent would create consumer confusion, would be in violation of US trademark laws, and thus could not be legitimate.

While the Complainant has provided ample evidence showing that it is well known, it has not provided any evidence to show that the use of the words "union labor life" by some other organization would necessarily be in violation of US trademark or unfair competition laws. Indeed these proceedings, conducted under the UDRP, are not the appropriate forum in which to argue such violations of national laws. National courts are the appropriate forums in which to argue such violations.

We cite in this context the Forum’s decision FA 93682 <cartoys.net>, in which the panel stated:

Car Toys, Inc. has not proven that Informa has no legitimate interests in respect of the domain name cartoys.net. The CAR TOYS trademark is not fanciful or arbitrary, and Car Toys has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate cartoys.net with CAR TOYS. Informa has demonstrated that the name is in use elsewhere. The arbitrator finds, therefore, that Informa has rebutted Car Toys’ arguments and has shown that it is in the business of selling descriptive domain names such as cartoys.net. As a result, Informa does have a legitimate interest in the domain name. That Informa has offered to sell this domain name to Complainant after inquiry by Complainant does not make its interest illegitimate.

Similar conclusions are reached in the Forum’s case FA 93547 <concierge.com>.

The panel holds that the words "union", "labor", and "life" are common words, that their use by the Respondent can be legitimate in light of the Respondent’s activities in selling life insurance to members of labor unions, and that Complainant has failed to prove that the Respondent has no legitimate interest in the disputed domain names.

Registration and Use in Bad Faith

The Complainant argues that the Respondent’s offer to sell the disputed domain names for US dollars 75,000, a sum well in excess of out of pocket costs, constitutes proof of the Respondent’s bad faith.

But Paragraph 4(b)(i) of the Policy states that evidence of the registration and use of a domain name in bad faith shall be:

circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name [emphasis added]

The Complainant has not provided any evidence that the Respondent acquired the disputed domain names primarily for the purpose of selling them to the Complainant. A mere offer to sell a domain name does not constitute bad faith behavior (see for example WIPO case D2000-0638 <manchesterairport.com>); much less so when the offer was solicited by the Complainant.

Nor has the Complainant provided any evidence of any other behavior by the Respondent that could be considered to be bad faith behavior.

The Complainant cites WIPO case D2000-0474 <chipmerchant.com>, in which the panel stated:

The Panel finds that the Respondent has made an illegitimate use of the domain names, with the intent, for commercial gain, to misleadingly divert consumers seeking the Complainant. As noted previously, the Respondent had knowledge of the Complainant when it registered the domain names. Based on all the evidence submitted, the Panel can not fathom a reason for the Respondent to use these specific domain names that are virtually identical to the Complainant’s name, for a commercial website bearing its own name that bears no relation to the domain names. The only reason the Panel can surmise to explain the Respondent’s registration and use of the domain names would be to divert online consumers seeking one of its successful competitors, thereby trading on its goodwill and reputation.

But the facts of the present case are quite different from those of <chipmerchant.com>. In the present case, there is no indication that the Respondent deliberately chose the disputed domain names in order to divert the Complainant’s business to itself. While the Respondent did know of the Complainant, it apparently knew of it under the name "ULLICO"; and the Respondent in the present case has given a plausible reason for its registration of the disputed domain names, namely to promote its own activities related to the selling of life insurance to members of labor unions.

The Panel holds that the Complainant has failed to prove that the Respondent registered and used the disputed domain names in bad faith.

DECISION

The Panel finds that the contested domain names are confusingly similar to the Complainant’s trademark; that the Complainant has not proven that the Respondent has no legitimate interests in the disputed domain names; and that the Complainant has not proven that the Respondent has registered and used the disputed domain names in bad faith. The Complaint is dismissed.

Richard Hill, Panelist

Dated: November 7, 2001

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