Liberty Mutual Insurance Company v. Gioacchino Zerbo
Claim Number: FA0912001299744
Complainant is Liberty
Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse, of Liberty Mutual
Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwsafeco.com>, registered with Fabulous.com.
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.
Terry F. Peppard as Panelist.
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 confirmed by e-mail to the National Arbitration Forum that the <wwwsafeco.com> domain name is registered with Fabulous.com and that Respondent is the current registrant of the name. Fabulous.com has verified that Respondent is bound by the Fabulous.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 December 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 12, 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@wwwsafeco.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant markets and provides insurance products and services through its subsidiary, Safeco Corporation.
Complainant began using its SAFECO service mark to offer its insurance products and services as early as 1976.
Complainant owns over 3,700 domain names featuring or relating to Complainant’s SAFECO mark.
Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for its SAFECO mark (Reg. No. 1,057,198, issued January 25, 1977).
Additionally, Complainant holds trademark registrations for its SAFECO mark with countries throughout the world, including with the Mexican Patent and Trademark Office (“MPTO”) (Reg. No. 751,127, issued June 25, 2002), and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 001430172, issued February 23, 2001).
Respondent is not authorized to use the SAFECO mark.
Respondent registered the <wwwsafeco.com> domain name on June 21, 2003.
The disputed domain name resolves to a parked website featuring hyperlinks to Complainant’s competitors in the insurance industry.
Respondent’s use of
the disputed domain name disrupts Complainant’s insurance business because
Internet users seeking to buy insurance products or services from Complainant
may be redirected to Complainant’s competitors through Respondent’s confusingly
similar website.
Respondent’s use of the <wwwsafeco.com> domain name is part of a pattern of bad faith
use and registration of domain names.
Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.
Respondent’s <wwwsafeco.com> domain name is confusingly similar to Complainant’s SAFECO mark.
Respondent does not have any rights to or legitimate interests in the <wwwsafeco.com> domain name.
Respondent registered and uses the <wwwsafeco.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant holds trademark registrations for the SAFECO
mark with the USPTO, the MPTO, and the OHIM.
These registrations are sufficient to establish its rights in the
mark.
Complainant claims that Respondent’s <wwwsafeco.com> domain name is confusingly similar to Complainant’s SAFECO mark. We agree, inasmuch the disputed domain name merely removes the period between the prefix “www” and the remainder of the domain name. Previous panels have found that the removal of the period between the “www” prefix and the balance of the domain name does not adequately distinguish a disputed domain name from a complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that a respondent’s <wwwbankofamerica.com> domain name is confusingly similar to a complainant’s BANK OF AMERICA trademark because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding that confusing similarity has been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from a complainant's NEIMAN-MARCUS mark).
The disputed domain name also adds the generic top-level domain (“gTLD”) to Complainant’s SAFECO mark. Previous panels have held that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel concludes that Respondent’s <wwwsafeco.com> domain name is confusingly similar to Complainant’s SAFECO mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <wwwsafeco.com> domain name. Previous panels have held that when a complainant makes a prima facie case in support of its allegations, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested 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 out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii), at which point the burden shifts to that respondent to show that it does have rights to or legitimate interests in the domain name).
Complainant has made out a prima facie case, and, owing to Respondent’s failure to respond to the Complaint, we may rightly presume that Respondent does not have rights to or legitimate interests in the <wwwsafeco.com> domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that, because a respondent failed to submit a Response:
Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.
However, we will examine the record before us, in light of the tests set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name.
We begin by
observing that Respondent has offered no evidence, and there is no evidence in
the record, suggesting that Respondent is commonly known by the domain name <wwwsafeco.com>. Moreover, Complainant asserts, and Respondent
does not deny, that Respondent is not authorized to use the SAFECO mark. Further, the pertinent WHOIS information
identifies the domain name registrant only as “Gioacchino Zerbo,” which does
not resemble the disputed domain name.
Therefore, we are constrained to conclude that Respondent has not established
rights or legitimate interests in the disputed <wwwsafeco.com> domain name pursuant to Policy ¶
4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that a respondent failed to establish rights or
legitimate interests in the <emitmortgage.com> domain name where that
respondent was not authorized to register domain names featuring a
complainant’s mark and failed to submit evidence that it was commonly known by
the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a
respondent had no rights to or legitimate interests in a disputed domain name
where there was no evidence in the record indicating that that respondent was
commonly known by the disputed domain name).
We also note that there is no dispute as to complainant’s
assertion to the effect that Respondent is using the <wwwsafeco.com> domain name to resolve to a website featuring
a hyperlink directory, and that the featured hyperlinks resolve to the websites
of third-parties which compete with Complainant in the insurance industry. In the circumstances here presented, we may
comfortably presume that Respondent receives click-through fees from the visits
of Internet users to the aforementioned hyperlinks. We conclude from all this that
Respondent’s use of the contested domain name is neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use of the domain name under
Policy ¶ 4(c)(iii). See
Jerry
Damson, Inc. v.
The Panel thus finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the <wwwsafeco.com>
domain name is part of a pattern of
bad faith use and registration of domain names, and that Respondent has been a
respondent in numerous UDRP proceedings in which disputed domain names
were transferred from Respondent to the complainants in those cases. See, for example, Starline Publ’ns, Inc. v. Zerbo, D2008-1822 (WIPO Jan. 21, 2009); see also Ginetta Cars Ltd. v. Zerbo, D2009-0611
(WIPO June 6, 2009). This behavior constitutes
a pattern of bad faith registration and use of domain names by Respondent under
Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Respondent’s <wwwsafeco.com> domain name resolves to a website containing
a directory of hyperlinks that resolve to third-party websites. These third-parties compete with Complainant
in the insurance business. Complainant
claims that Respondent’s use of the disputed domain name disrupts Complainant’s
insurance products and services business because Internet users looking to buy
insurance products or services from Complainant may be redirected to
Complainant’s competitors through Respondent’s confusingly similar website. Respondent does not deny these allegations. We
conclude, therefore, that Respondent’s use of the <wwwsafeco.com> domain
name disrupts Complainant’s insurance business and evidences bad faith
registration and use of the contested domain name pursuant to Policy ¶
4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a contested domain name to attract Internet users to a directory website
containing links to the websites of a complainant’s commercial competitors
represents bad faith registration and use of the domain under Policy ¶
4(b)(iii)); see also Am.
Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr.
10, 2007) (holding that, where a respondent’s website featured hyperlinks to
competing websites, that respondent’s use of the <redeemaamiles.com>
domain name constituted disruption of theatcomplainant’s business under Policy
¶ 4(b)(iii)).
We have already
concluded that Respondent uses the disputed domain name to generate
click-through fees from the hyperlinks relating to Complainant’s competitors in
the insurance industry. Internet users
may become confused as to Complainant’s possible affiliation with or
sponsorship of the third-party hyperlinks and website resolving from the
disputed domain name. In these
circumstances, Respondent’s receipt of click-through fees in connection with
this behavior further evidences bad faith registration and use of the contested
domain name under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that a respondent engaged in bad faith
registration and use of a domain name that was confusingly similar to a
complainant’s mark by using it to offer links to third-party websites featuring
services similar to those offered by that complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <wwwsafeco.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 3, 2010
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