Liberty Mutual
Insurance Company v.
Claim Number: FA1006001330686
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 <libertymutul.com>, registered with Directnic, Ltd.
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 June 18, 2010.
On June 18, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <libertymutul.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd verified that Respondent is bound by the Directnic, Ltd 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 June 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@libertymutul.com. Also on June 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2010, 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 that Respondent registered, <libertymutul.com>, is confusingly similar to Complainant’s LIBERTY MUTUAL mark.
2. Respondent has no rights or legitimate interests in the <libertymutul.com> domain name.
3. Respondent registered and used the <libertymutul.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, is a multi-line insurer in the property and casualty field with over 45,000 employees in over 900 offices worldwide. Complainant holds multiple trademark registrations for its LIBERTY MUTUAL mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 1,405,249 issued August 12, 1986) which it uses in connection with a variety of products and services in the insurance and financial services industry.
Respondent, Texas Internet, registered the disputed domain name January 9, 2002. The disputed domain name resolves to a website that displays third-party click-through links, some of which directly compete 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."
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 asserts rights in its LIBERTY MUTUAL mark based on its multiple registrations of the mark with the USPTO (e.g. Reg. No. 1,405,249 issued August 12, 1986). The Panel finds that Complainant’s registration of its LIBERTY MUTUAL mark with the USPTO is sufficient evidence to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that Respondent’s <libertymutul.com>
domain name is confusingly similar
to Complainant’s LIBERTY MUTUAL mark.
Respondent’s disputed domain name merely deletes the letter “a” from the
entirety of Complainant’s mark, removes the space between the terms of
Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations are
not sufficient to avoid a finding of confusing similarity under a Policy ¶ 4(a)(i) analysis. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005)
(holding that the <pfzer.com> domain name was confusingly similar to the
complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Bond & Co. Jewelers, Inc. v.
Therefore, the Panel finds that Respondent’s disputed <libertymutul.com>
domain name is confusingly similar
to Complainant’s LIBERTY MUTUAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires Complainant to make a prima facie case to support its contentions before the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel finds that based on the arguments made in the Complaint, Complainant made a prima facie case to support its contentions. Respondent did not file a Response in these proceedings and thus has not provided any evidence of its rights or legitimate interests in the disputed domain name. Nevertheless, the Panel still examines the record in light of the factors outlined in Policy ¶ 4(c) to determine whether Respondent has such rights 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The WHOIS information for the disputed domain name lists the registrant as “Texas Internet.” This information, coupled with Complainant’s assertions that it has not authorized, licensed, or otherwise permitted Respondent to use its LIBERTY MUTUAL mark, leads the Panel to find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant urges that Respondent has no rights or legitimate interests in the <libertymutul.com> domain name. Complainant provided screen shots that show that Respondent’s disputed domain name resolves to a website featuring third-party links to websites, some of which compete directly with Complainant in the insurance and financial services industries. The Panel finds that Respondent’s use of the disputed domain name for such purpose is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds that Respondent’s use of the disputed domain name that differs by only a single letter from Complainant’s registered LIBERTY MUTUAL mark is an attempt by Respondent to capitalize on a common typing error made by Internet users. The Panel finds this to be evidence of typosquatting and such conduct provides additional proof that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See 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”).
The Panel finds that Respondent has no rights to or legitimate interests in the domain name that contains in its entirety Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly contends that Respondent registered and used the disputed domain name in bad faith. The Panel finds that Respondent’s registration and use of the disputed domain name to display third-party commercial links that compete with Complainant’s products and services provided in the insurance and financial services industries constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant asserts further that Respondent intentionally
registered and used the disputed domain name to attract, for commercial gain,
Internet users to Respondent’s website by creating a likelihood of confusion as
to the source, sponsorship, or affiliation of Complainant with Respondent’s
website. Complainant further asserts
that Respondent likely receives click-through fees based on the displayed links
on the resolving website. The Panel
finds that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the 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).”).
As established
previously, Respondent has engaged in the process of typosquatting. The Panel finds that typosquatting is itself
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’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).”); 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)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith. 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 <libertymutul.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 3, 2010.
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