Zander Insurance Agency, Inc. v. Role, Manage c/o Administration Local
Claim Number: FA0808001219610
Complainant is Zander Insurance Agency, Inc. (“Complainant”), represented by Christopher
A. Sloan, of Boult, Cummings, Conners & Berry, PLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zanderinsurnace.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On August 14, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <zanderinsurnace.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2008 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@zanderinsurnace.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <zanderinsurnace.com> domain name is confusingly similar to Complainant’s ZANDER INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <zanderinsurnace.com> domain name.
3. Respondent registered and used the <zanderinsurnace.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zander Insurance Agency, Inc., is in the business of insurance brokerage services since the 1920s. Complainant uses its ZANDER mark in association with this business and registered the mark with the United States Patent and Trademark Office (“USPTO”) on June 26, 2007 (Reg. No. 3,255,315). Additionally, Complainant has utilized its ZANDER INSURANCE mark since the 1920s and has acquired national fame as a result of the endorsement by nationally-renowned financial expert and talk radio host Dave Ramsey.
Respondent, Role, Manage c/o Administration Local, registered the <zanderinsurnace.com> domain name on September 1, 2004, which resolves to a website offering third party links for various services, including those in competition 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 draw such inferences it 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 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.
The Panel finds that Complainant’s USPTO trademark
registration adequately confers rights in the ZANDER INSURANCE mark to
Complainant pursuant to Policy ¶ 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."). However,
Complainant’s trademark does not predate Respondent’s registration of the <zanderinsurnace.com> domain
name. Consequently, Complainant alleges
common law rights in the ZANDER INSURANCE, which it can prove under Policy ¶
4(a)(i) by demonstrating that the mark has acquired
secondary meaning. See Tuxedos By Rose v. Nunez, FA 95248
(Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its
use was continuous and ongoing, and secondary meaning was established).
Complainant asserts that it has common law rights in the ZANDER INSURANCE mark, because Complainant has continuously used its mark in commerce since the 1920s in association with its insurance brokerage business. Complainant’s trademark registration demonstrates that the USPTO considers the mark to have acquired secondary meaning. Complainant further contends that its mark has become famous nationally due to the endorsement of the mark by financial expert Dave Ramsey. In Zander Insurance Agency, Inc. v. Whois Privacy Protection Service, Inc., FA 578631 (Nat. Arb. Forum Dec. 5, 2005), the panel found that Complainant, Zander Insurance Agency, Inc., had established a prima facie case of its rights in the ZANDER INSURANCE mark. Similarly, this Panel finds that Complainant has made a prima facie case of its common law rights in the mark pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
The <zanderinsurnace.com> domain name includes Complainant’s ZANDER INSURANCE mark in its entirety, but transposes the letters “a” and “n” in the word “insurance.” In Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), the panel found the <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noted that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.” Similarly, the Panel finds that the transposition of letters in this case also creates an example of typosquatting, and is evidence that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name also adds the generic top-level domain (“gTLD”) “.com,” but this addition is irrelevant to a determination under Policy ¶ 4(a)(i). The Panel finds that the disputed domain name is confusingly similar and is a typosquatted version of Complainant’s mark under Policy ¶ 4(a)(i). See Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark); 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 has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
No Response has been submitted to the Complaint. As such, the Panel infers that Respondent has no rights or legitimate interests in the disputed domain name, but will nonetheless examine the record in light of the factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the <zanderinsurnace.com> domain name. Absent any evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant asserts that the disputed domain name is being
used commercially and in competition with Complainant due to the display of
competing links on the resolving website.
The <zanderinsurnace.com> domain
name sells products and services in direct competition with those offered in
association with Complainant’s business.
The Panel finds this is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see
also Glaxo Group Ltd. v. WWW Zban,
FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site).
Additionally, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name
due to its typosquatting of Complainant’s ZANDER INSURANCE mark pursuant to
Policy ¶ 4(a)(ii).
IndyMac Bank F.S.B. v. Ebeyer, FA
175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent
lacked rights and legitimate interests in the disputed domain names
because it “engaged in the practice of typosquatting by taking advantage
of Internet users who attempt to access Complainant's <indymac.com>
website but mistakenly misspell Complainant's mark by typing the letter ‘x’
instead of the letter ‘c’”); see also LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Nat’l Ass’n of Prof’l
Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting … as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii)
This Panel has found that Respondent registered a
typosquatted version of Complainant’s ZANDER INSURANCE mark for its disputed
domain name pursuant to Policy ¶ 4(a)(i). In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel found that “[r]espondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”
Likewise, this Panel finds that Respondent’s use of the typosquatted
domain name constitutes evidence of bad faith registration and use under Policy
¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003)
(finding that the <dermatalogica.com> domain name was a “simple
misspelling” of the complainant's DERMALOGICA mark which indicated
typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA
180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that
the respondent’s registration and use of the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names capitalized on the
typographical error of Internet users seeking the complainant's THE
PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting
and bad faith pursuant to Policy ¶ 4(a)(iii)).
Furthermore, the <zanderinsurnace.com> domain name resolves to a website offering products and services in direct competition with Complainant. The Panel finds this competitive and disruptive use sufficient to establish Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The fact that the disputed domain name is confusingly similar to
Complainant’s marks and commercially offers competitive products for
Respondent’s commercial gain strengthens the Panel’s findings that Respondent
registered and is using the disputed domain name in bad faith under Policy ¶
4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv)
through the respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum
Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see
also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
the respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website).
The Panel finds that Complainant has 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 <zanderinsurnace.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: October 7, 2008
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