Liberty Mutual Insurance Company v. Kanter
Associates SA a/k/a Admin
Claim Number: FA0912001299743
PARTIES
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse, Portsmouth, New
Hampshire, United States of America.
Respondent is Kanter Associates
SA a/k/a Admin (“Respondent”),
represented by Maria Bergsten,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <safecoinsuance.com>, <liberyinsurance.com>, and <montgomery-insurance.com>,
registered with Fabulous.com PTY LTD.
PANEL
The undersigned certifies that he or she has
acted independently and impartially and to the best of his knowledge has no
known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq., as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on December 18, 2009; the National
Arbitration Forum received a hard copy of the Complaint on December 21, 2009.
On December 20, 2009, Fabulous.com PTY LTD.
confirmed by e-mail to the National Arbitration Forum that the <safecoinsuance.com>, <liberyinsurance.com>, and <montgomery-insurance.com> domain
name are registered with Fabulous.com PTY LTD. and that the Respondent is the
current registrant of the name. Fabulous.com
PTY LTD. has verified that Respondent is bound by the Fabulous.com PTY LTD.
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 December 29, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 19, 2010 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@safecoinsuance.com, postmaster@liberyinsurance.com, and
postmaster@montgomery-insurance.com by e-mail.
A timely Response was received and determined
to be complete on January 19, 2010.
On February
1, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando
Triana, Esq., as Panelist.
In the sole discretion of the
Panel and by means of an official order issued on February 8, 2010, served upon
the parties on the very same date, the Panel required Respondent to submit to the Forum, the corresponding Power of Attorney
and/or of Representation which allowed his counsel to incontestably surrender
its client’s ownership upon the domains in dispute. The foregoing, as per the
Panel deemed appropriate to have sufficient evidence attesting that Ms.
Bergsten is duly empowered to proceed as done through the response to the
Complaint.
After examining the evidence enclosed to the proceeding,
the Panel did not find any reliable connection between the current owner of the
disputed domain and KANTER ASSOCIATES SA. And thus, decided to proceed as
previously explained.
Nevertheless, through a formal and conceited letter, Mr.
Paul R. Keating, Esq, acting on behalf of Respondent, assured that his Law Firm
(LAW.ES) does represents the legal interests of KANTER ASSOCIATES SA. in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain names be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Complainant
asserts and has submitted evidence of federal trademark registrations for the
LIBERTY MUTUAL mark (Reg. No. 1,405,249 issued August 12, 1986), the SAFECO
mark (Reg. No. 1,057,198 issued January 25, 1977) and the MONTGOMERY INSURANCE
mark (Reg. No. 2,897,107 issued October 26, 2004) with the United States Patent
and Trademark Office (“USPTO”).
2.
Complainant argues that Respondent’s <safecoinsuance.com> <liberyinsurance.com>
and <montgomery-insurance.com>
domain names are confusingly similar to Complainant’s SAFECO, LIBERTY MUTUAL
and MONTGOMERY INSURANCE marks pursuant to Policy ¶ 4(a)(i).
3.
Respondent has no rights to or legitimate interests in the domain names in dispute. Furthermore,
Complainant submits that because of the widespread renown, use, promotion,
distribution and advertisement by Complainant of its marks, Respondent knew or
should have known of Complainant’s rights in the marks, and the valuable
goodwill represented and symbolized thereby when it registered the domain names
in dispute.
4.
Respondent registered and use the disputed domains in bad faith. The prior, as logical consequence of the previous
contentions and thus, Complainant argues that Respondent’s Registration
of the Domain Name should be considered as having been registered and being
used in bad faith and according to the ICANN rule 3 (b) (ix) (3), the
Complainant claims that the Respondent had an affirmative obligation of not to
register domain names that could violate any registered service or trademark.
The Complainants requests that
the Panel issues a decision that the domain-names be transferred.
B. Respondent
Respondent has admitted in his
response to the complaint that it is ready to offer the transfer without
inviting the decision of the Panel in accordance with the Policy.
FINDINGS
Respondent
consents to transfer the <safecoinsuance.com> <liberyinsurance.com>
and <montgomery-insurance.com>
domain names to Complainant. However, after the initiation of this
proceeding, the registrar, Fabulous.com PTY LTD., placed a hold on Respondent’s
account and therefore Respondent cannot transfer the disputed domain names
while this proceeding is still pending. As a result, the Panel considers that in a circumstance such as this, where Respondent
has not contested the transfer of the disputed domain names but instead agrees to transfer the domain name
in question to Complainant, it is decided
to forego the traditional UDRP analysis and order an immediate transfer of
the <safecoinsuance.com> <liberyinsurance.com>
and <montgomery-insurance.com>
domain names.[1]
Since the requests of the parties
in this case are identical, the Panel has no scope to do anything other than to
recognize the common request, and it has no mandate to make findings of fact or
of compliance (or not) with the Policy.[2]
The Panel
has decided to accept the Respondent’s request in making its decision, and
notes that Respondent has chosen not to challenge any of Complainant’s
assertions but, rather, to agree to transfer the disputed domain name to
Complainant in satisfaction of Complainant’s requested remedy. Therefore, under
such circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the
traditional UDRP analysis and order the transfer of the domain names. Several
Panels have reached the very same conclusion when ruling similar cases: (See
for example Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA
212653 (Nat Arb. Forum Jan. 13, 2004 and
In
connection to the official request issued, and though Respondent failed to
properly comply with the administrative order, the Panel hereby[1]
accepts Ms. Maria Bergsten and/or Mr. Paul R. Keating, Esq, as representatives
for Respondent, leading the provisions of the Policy (rules 3 (b) (xiv) and 5
(b) (vii).
DISCUSSION
Regardless
of the foregoing facts, even though the decision of the Panel will be
necessarily to transfer the domain names in dispute in favor of Complainant for
the aforementioned reasons, and although the Panel has decided that Respondent
has explicitly consented on its answer with the terms of the complaint even without a decision on the merits, the Panel deems crucial to point out
the following findings made on his behalf:
·
In this case, the “consent-to-transfer”
approach is but one way for cybersquatters to avoid adverse findings against
them, which makes necessary for arbitrators to issue decisions not only ordering
the transfer, but also convicting, reproving and condemning such behaviors.[3]
·
As required by Policy, the Panel finds that
the 3 elements of the Policy are met, due to the following considerations:
The Domain Names <safecoinsuance.com> <liberyinsurance.com>
and <montgomery-insurance.com>
are
confusingly similar to Complainant’s marks LIBERTY MUTUAL mark (Reg. No.
1,405,249 issued August 12, 1986), the SAFECO mark (Reg. No. 1,057,198 issued
January 25, 1977) and the MONTGOMERY INSURANCE mark (Reg. No. 2,897,107 issued
October 26, 2004) registered before the United States Patent and Trademark
Office (“USPTO”). The disputed Domain Names incorporate Complainant’s marks
in its entirety, adding misspelled version of the correct terms included
in the legitimate domain names and adding the generic top-level domain (“gTLD”)
“.com.”, such as <safecoinsuance.com>,
<liberyinsurance.com>. The Panel finds
that generic terms, especially generic terms with an obvious relationship to a
complainant’s business operation that are added to a complainant’s registered
mark, create a confusing similarity between the disputed domain name and the
mark. By registering the disputed domain names, Respondent creates a likelihood
of confusion with Complainant’s marks as to the source, sponsorship,
affiliation, or endorsement of the Domain Names and the web sites to which it
resolve.
Respondent is using Complainant’s Marks in the Domain Name
to drive traffic to Respondent’s
Site, which gathers personal information from visitors and promotes the goods
and services of various businesses unrelated to Complainant. Thus, Respondent registered the Domain Names
with the intent to attract Internet users to its Site for commercial gain by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s Domain Name and Site,
thereby misleadingly diverting Internet traffic from Complainant’s web site to
Respondent’s for commercial gain. This
use of the Domain Names indicates that Respondent has intentionally attempted
to attract, for commercial gain, Internet users to Respondent’s web site or
other on-line location, by creating a likelihood of confusion with the
Complainants’ mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site or location or of a product or service on Respondent’s
web site or location.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <safecoinsuance.com>, <liberyinsurance.com>, and <montgomery-insurance.com>
domain names be TRANSFERRED from Respondent to Complainant.
FERNANDO TRIANA, Esq., Panelist
Dated: February 22, 2010
[1] See
Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625
(Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where
the respondent stipulated to the transfer); see also Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004)
[2] See also Disney Enters., Inc. v.
Morales, FA 475191 (Nat. Arb. Forum June 24, 2005)
[3] In Graebel Van Lines, Inc.
v.