Informa UK Limited v. gary chen / garychen
Claim Number: FA1206001451401
Complainant is Informa UK Limited (“Complainant”), represented by Kathryn Starshak of K&L Gates LLP, Illinois, USA. Respondent is gary chen / garychen (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insuranceday.org>, registered with Name.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2012; the National Arbitration Forum received payment on June 29, 2012.
On July 2, 2012, Name.com, LLC confirmed by e-mail to the National Arbitration Forum that the <insuranceday.org> domain name is registered with Name.com, LLC and that Respondent is the current registrant of the name. Name.com, LLC has verified that Respondent is bound by the Name.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012 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@insuranceday.org. Also on July 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <insuranceday.org> domain name is confusingly similar to Complainant’s INSURANCE DAY mark.
2. Respondent does not have any rights or legitimate interests in the <insuranceday.org> domain name.
3. Respondent registered and used the <insuranceday.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the following trademark registrations for the INSURANCE DAY mark with the United States Patent and Trademark Office (“USPTO”), the United Kingdom Intellectual Property Office (“UKIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO Reg. No. Reg. No. 4,012,206 registered Aug. 16, 2011 & filed Nov. 15, 2010;
USPTO Reg. No. 4,012,484 registered Aug. 16, 2011 & filed Jan. 26, 2011;
UKIPO Reg. No. 2,564,324 registered Feb. 11, 2011 & filed Nov. 15, 2010; and
OHIM Reg. No. 009524273 registered May 2, 2011 & filed Nov. 15, 2011.
Complainant also has common law rights in the mark dating back to 1995 because it has been using the INSURANCE DAY mark in commerce for printed publications, research, and analysis in the insurance field since at least 1995. Complainant provides its goods and services through its own domain name, <insuranceday.com>, throughout Africa, Asia, Europe, the Middle East, the U.S., Central America and South America.
Respondent registered the <insuranceday.org> domain name on January 18, 2010. Respondent uses the disputed domain name to resolve to a website attempting to pass itself off as Complainant’s by mimicking the color scheme, layout, format and informational content.
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."
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.
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.”).
The Panel finds that Complainant’s trademark registrations with various trademark authorities sufficiently prove that Complainant has rights in the INSURANCE DAY mark, dating back to the filing date of the earliest mark, November 15, 2010. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant has also established common law rights in the INSURANCE DAY mark dating back to 1995. The Panel notes that Complainant’s USPTO trademark certificate lists a first-use-in-commerce date of 1995. Complainant has also been using <insuranceday.com> to provide goods and services around the world since 1996. Complainant provides screenshots of its <insuranceday.com> domain name showing use of the INSURANCE DAY on the resolving website since 2006. The Panel concludes that Complainant has established common law rights dating back to 1995 for purposes of Policy ¶ 4(a)(i). 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).
Respondent’s <insuranceday.org> domain name is identical to the INSURANCE DAY because the only difference is the addition of the generic top-level domain (“gTLD”) “.org” and the deletion of the space between the terms of the mark. These are insignificant changes that fail to distinguish the disputed domain name from the mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). The Panel therefore finds that Respondent’s <insuranceday.org> domain name is identical to Complainant’s INSURANCE DAY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known as “Insurance Day.” The WHOIS information for the <insuranceday.org> domain name identifies the registrant as “Gary Chen.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent’s disputed domain name resolves to a website intentionally imitating Complainant’s website in the color scheme, font, layout, and use of the INSURANCE DAY mark. Complainant also asserts that Respondent’s resolving website provides informational content very similar to the content provided by Complainant, content that is merely copied and pulled from other websites or press releases without attribution. Based on these uncontroverted allegations, the Panel finds that Respondent is attempting to pass itself off as Complainant, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding that the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
As part of its effort to pass itself off as Complainant, Complainant contends, Respondent uses the disputed domain name and resolving website to solicit personal information from Internet users via its “Contact Us” box requesting visitors’ names and e-mail addresses. The Panel finds that this constitutes phishing, which is further evidence of that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered and uses the confusingly similar <insuranceday.org> domain name in an effort to create commercial benefit from Internet users who might stumble upon Respondent’s website, click on the articles displayed, and generate advertising revenue for Respondent. This demonstrates Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Respondent registered and uses the disputed domain name to closely mirror the design of Complainant’s official website, including similar fonts, colors, layout, informational content, and Complainant’s INSURANCE DAY mark. The Panel finds that Respondent is attempting to pass itself off as Complainant in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Finally, Complainant argues that Respondent had actual knowledge of Complainant and its rights in the INSURANCE DAY mark due to the strong similarity between the two resolving websites. The Panel agrees and finds further bad faith registration according to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
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 <insuranceday.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 13, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page