Assurant, Inc. v. UAE Investments Company, Ltd.
Claim Number: FA0808001220828
Complainant is Assurant, Inc. (“Complainant”), represented by Brian
M. Davis of Alston & Bird, LLP, North Carolina,
USA. Respondent is UAE
Investments Company, Ltd. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <menaassurant.com>, registered with Namesecure.com.
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 August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint August 18, 2008.
On August 18, 2008, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <menaassurant.com> domain name is registered with Namesecure.com and that Respondent is the current registrant of the name. Namesecure.com verified that Respondent is bound by the Namesecure.com 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 August 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 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@menaassurant.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 16, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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 Respondent registered, <menaassurant.com>, is confusingly similar to Complainant’s ASSURANT mark.
2. Respondent has no rights to or legitimate interests in the <menaassurant.com> domain name.
3. Respondent registered and used the <menaassurant.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Assurant, Inc., is a well-known provider of insurance and financial services. Complainant registered the ASSURANT mark for business management and insurance underwriting services with the United States Patent and Trademark Office (“USPTP”)(Reg. No. 2,543,367 issued Feb. 26, 2002).
Respondent registered the disputed domain name, <menaassurant.com>, April 20, 2006, and it resolves to a website displaying only the words “coming soon.” Respondent has also been the subject of at least one prior UDRP proceeding in which the disputed domain name was ordered transferred from Respondent. See Diners Club Int’l Ltd. v. UAE Inv. Co. Ltd., FA 797553 (Nat. Arb. Forum Oct. 23, 2006).
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."
Given 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 rights in the ASSURANT mark through
registration with the USPTO pursuant to Policy ¶ 4(a)(i).
The <menaassurant.com> domain name contains
Complainant’s ASSURANT mark in its entirety followed by the generic top-level
domain (“gTLD”) “.com.” A gTLD is
typically considered irrelevant to a Policy ¶ 4(a)(i)
analysis. See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis.”). The disputed domain name also precedes the
ASSURANT mark with the term “mena.”
Complainant contends that “mena” is actually an acronym “M.E.N.A.” and
stands for the geographic region “Middle East and
The Panel concludes that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Before a UDRP panel may proceed in its analysis to consider
Policy ¶ 4(a)(ii), a complainant must first establish
a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie showing against Respondent
and that, accordingly, the burden shifted to Respondent to demonstrate its
rights to or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name); see also Document Techs., Inc.
v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although
Paragraph 4(a) of the Policy requires that the Complainant prove the presence
of this element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Complainant failed to reply to the Complaint. Therefore, the Panel presumes that Respondent
lacks rights and legitimate interests in the disputed domain name. The Panel accepts as true all of
Complainant’s contentions unless clearly contradicted by the evidence. As a result, the Panel examines the record in
consideration of the elements listed under Policy ¶ 4(c). See Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that the complainant’s allegations are
true unless clearly contradicted by the evidence); see also 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.”).
Complainant asserts that Respondent registered the disputed
domain name containing its ASSURANT mark without permission or
authorization. Additionally, the WHOIS
information listed nothing but “NameSecure.com” as the contact information for
the disputed domain name. Upon
initiation of this dispute, it was disclosed that Respondent, under the alias
“UAE Investment Company,” owns the disputed domain name. Without any additional information, the Panel
declines to find that Respondent is or ever was commonly known by the <menaassurant.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
Coppertown Drive-Thru Sys., LLC v.
Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its registered
mark).
The <menaassurant.com> domain name resolves to
a website displaying nothing but the phrase “coming soon.” The Panel finds that this is a passive
holding of the disputed domain name and therefore constitutes 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 Pharmacia
& Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no
rights or legitimate interests where the respondent failed to submit a response
to the complaint and had made no use of the domain name in question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's
[inactive use] of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”).
The Panel concludes that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent has been involved in at least one other UDRP
proceeding, in which the disputed domain name was ordered transferred from
Respondent. See Diners Club Int’l Ltd. v. UAE Inv. Co.
Ltd., FA 797553 (Nat. Arb. Forum Oct. 23, 2006). Previous panels have held that where a prior
proceeding exists in which a panel has ordered the transfer of a disputed
domain name from the respondent, a pattern of registering infringing disputed
domain names may be presumed to support findings of a respondent’s bad
faith. See Westcoast
Contempo Fashions Ltd. v.
Additionally, the <menaassurant.com> domain
name resolves to a website displaying nothing but the phrase “coming
soon.” The Panel finds this to
constitute an inactive use or passive holding of the disputed domain name. Without other evidence in the record, the
Panel finds this to be further evidence of Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v.
Meyers, FA 697818 (Nat. Arb. Forum
June 26, 2006) (holding that the non-use of a disputed domain name for several
years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12,
2007) (holding that non-use of a confusingly similar domain name for over seven
months constitutes bad faith registration and use).
The Panel concludes that Complainant satisfied the elements of ICANN 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 <menaassurant.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 30, 2008.
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