The Travelers Indemnity Company v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1208001458678
Complainant is The Travelers Indemnity Company (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <travelersinsurancecompany.com>, registered with Moniker.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2012; the National Arbitration Forum received payment on August 17, 2012.
On August 20, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <travelersinsurancecompany.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 August 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@travelersinsurancecompany.com. Also on August 22, 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 September 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Travelers has been in the insurance business for nearly 150 years. Today, Travelers is one of the leading providers of personal property and casualty insurance in the United States. A component of the Dow Jones Industrial Average, Travelers has more than 30,000 employees, 13,000 independent agents, and multiple market segments across the personal, business, financial, and international insurance groups. In addition to its operations in the U.S., Travelers conducts business in the United Kingdom, Canada, the Republic of Ireland, and Brazil.
Complainant owns trademark registrations for the TRAVELERS mark (e.g., Reg. No. 1,611,053 registered August 28, 1990) with the United States Patent and Trademark Office (“USPTO”), as well other relevant registrations.
The <travelersinsurancecompany.com> domain name is confusingly similar to the TRAVELERS mark.
Respondent adds the following to Complainant’s mark: the descriptive term “insurance,” the generic term “company,” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <travelersinsurancecompany.com> domain name.
Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a website where links are displayed to competing insurances services.
Respondent registered and is using the <travelersinsurancecompany.com> domain name in bad faith.
Respondent offers the <travelersinsurancecompany.com> domain name for sale.
Respondent has developed a pattern of bad faith registration and use of domain names.
The <travelersinsurancecompany.com> domain name is disruptive to Complainant’s business.
Respondent uses the <travelersinsurancecompany.com> domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the TRAVELERS mark as to the source of the disputed domain name.
Prior to the registration of the <travelersinsurancecompany.com> domain name, Respondent had knowledge of Complainant’s rights in the TRAVELERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its TRAVELERS mark that predate Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Prior to registering the <travelersinsurancecompany.com> domain name, Respondent had knowledge of Complainant’s rights in the TRAVELERS mark.
Respondent registered the at-issue domain name on or about November 27, 2005.
The disputed domain name resolves to a website where links are displayed to competing insurances services.
Respondent offers the <travelersinsurancecompany.com> domain name for sale.
Respondent has developed a pattern of bad faith registration and use of domain names.
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.”).
Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights.
Complainant’s ownership of USPTO trademark registrations for the TRAVELERS mark is conclusive evidence of having rights in a mark for the purposes of Policy ¶4(a)(i) and the Policy is satisfied regardless of where the parties are located. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent has merely taken the TRAVELERS mark and added a descriptive term, generic term, and gTLD. The addition of these descriptive or generic terms does not remove the at-issue domain name from the realm of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Furthermore, the necessary gTLD is irrelevant to making a Policy ¶ 4(a)(i) determination. 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, Respondent’s <travelersinsurancecompany.com> domain name is confusingly similar to Complainant’s TRAVELERS mark pursuant to Policy ¶ 4(a)(i).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in the at‑issue domain name. Respondent’s offering the domain name for sale likewise urges against finding Respondent to have either rights or legitimate interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS record for the <travelersinsurancecompany.com> domain name lists “Domain Admin / Taranga Services Pty Ltd” as the domain name registrant and there is no evidence tending to show that the Respondent is commonly known by the at-issue domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <travelersinsurancecompany.com> 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).
The <travelersinsurancecompany.com> domain name resolves to a website where links are displayed that reference competing insurance services. Using the domain name in such manner is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), (the display of competing links on a disputed domain name is not a use which confers rights or legitimate interests to the respondent in the disputed domain name). Therefore, the Panel finds that Respondent’s use of the <travelersinsurancecompany.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent, through a third party intermediary, lists the at-issue domain name for sale. Respondent’s offer to sell the at-issue domain name is further evidence that Respondent lacks any rights or legitimate interests in <travelersinsurancecompany.com>. See State Farm v. Transure Enterprise (NAF FA0804001176762) (holding respondent’s offer to sell the domain name <statefarmretires.com> is “evidence that respondent lacks all rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also Yahoo! et al. v. Yomtobian (NAFFA0304000154591) (“The Panel finds that Respondent’s intent to sell its rights in the infringing domain names suggests Respondent lacks rights and legitimate interests in the domain names.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) enumerated bad faith circumstances are present and there is additional other evidence from which to conclude that Respondent acted in bad faith under Policy ¶4(a)(ii) in registering and using the at‑issue domain name.
Respondent offers the <travelersinsurancecompany.com> domain name for sale. A link is displayed on the domain name’s website under the heading “TRAVELERSINSURANCECOMPANY.COM may be for sale.” The link references a webpage for an entity named ParkLogic where Internet users may negotiate for the purchase of the disputed domain name from Respondent. The offer to sell the disputed domain name in this manner is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Respondent has developed a pattern of bad faith registration and use of domain names. Respondent has been the respondent in numerous UDRP proceedings that resulted in the disputed domain name being transferred to the respective complainant. See in part Retail Royalty Co. v. Domain Admin / Taranga Servs. Pty Ltd, FA 1359777 (Nat. Arb. Forum Dec. 30, 0210) andEnterp. Holdings, Inc. v. Domain Admin /Taranga Servs. Pty Ltd., FA 1371561 (Nat. Arb. Forum Mar. 16, 2011). The fact of these multiple adverse UDRP proceedings indicates that Respondent is serial cybersquatting and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s use of the <travelersinsurancecompany.com> domain name is disruptive to Complainant’s business under Policy ¶4(b)(iii) and was thus registered and being used in bad faith. The at-issue domain name addresses a website that displays sponsored-link advertisements for third party websites advertising and promoting services and products that directly compete with Complainant. See H-D Michigan v. Martin (NAF FA0909001286735) (holding respondent used the domain names <officialharleydavidsonlive.com> and <darkcustom.com> in bad faith because “Respondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its marks by displaying third-party links to Complainant’s competitors in the motorcycle and motorcycle accessory industry.”); see also Toshiba v. Zhoukov (NAF FA0610000812912) (holding respondent’s use of the domain names <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com> for websites providing links to various competing websites “constitutes a disruption of complainant’s business and evinces bad faith pursuant to Policy ¶ 4(b)(iii).”)
Respondent also uses the <travelersinsurancecompany.com> domain name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s TRAVELERS mark as to the source of the at-issue domain name. The <travelersinsurancecompany.com> domain name resolves to a website that displays links to websites in competition with Complainant. These links are listed under headings, such as “GEICO Auto Insurance” and “Life Insurance - $9 Month.” Therefore, it is apparent that Respondent registered and is using the <travelersinsurancecompany.com> domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, as mentioned above the domain name is comprised of Complainant’s very well known TRAVELERS trademark and related terms. Also as mentioned above, the domain names resolves to a website with content in competition with Complainant. These circumstances indicate that Respondent registered the disputed domain name with actual knowledge of Complainant and its well-known trademark and thereby demonstrate Respondent’s bad faith under Policy ¶ 4(a)(iii). See Travelers v. Whois Protection (WIPO D2007-0846) (holding respondent registered the domain name <thetravelers.com> in bad faith with presumed knowledge of Complainant’s rights because “Complainant’s trademark TRAVELERS has been in use for well over a hundred years; its use has been prominent and extensive.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <travelersinsurancecompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 17, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page