Assurant, Inc. v. ICS INC.
Claim Number: FA1211001470246
Complainant is Assurant, Inc. (“Complainant”), represented by Jason M. Sneed of Sneed PLLC, North Carolina, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assuranthealthproviders.com>, registered with ENOM, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2012; the National Arbitration Forum received payment on November 7, 2012.
On November 8, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <assuranthealthproviders.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 November 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@assuranthealthproviders.com. Also on November 13, 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 December 17, 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:
Complainant alleges:
Complainant provides various health insurance and health service offerings under the ASSURANT HEALTH mark.
Complainant has registered the ASSURANT HEALTH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,974,177 registered February 26, 2002).
Respondent registered the <assuranthealthproviders.com> domain name on January 9, 2012.
Respondent’s <assuranthealthproviders.com> domain name is confusingly similar to Complainant’s ASSURANT HEALTH mark.
Respondent uses the disputed domain name to resolve to a website which purports to offer links to competing health insurance providers, including Aetna, UPMC, AARP, and Univera.
Respondent has been held to have registered domain names in bad faith in at least three prior UDRP proceedings submitted by Complainant. Respondent has also had numerous other adverse UDRP decisions regarding complainants other than the instant one.
Based on Complainant’s prior registration of the ASSURANT HEALTH mark with the USPTO, Respondent could not have registered and used the disputed domain name without at least constructive knowledge of Complainant and its rights in the mark.
Complainant owns and shows evidence of trademark registrations with the USPTO for the ASSURANT mark and related marks such as ASSURANT HEALTH.
Respondent is not authorized to use Complainant’s trademarks.
Complainant has prevailed against Respondent in at least three other UDRP arbitration decisions. Respondent has had numerous adverse UDRP decisions concerning complainants other than the instant one.
Respondent registered the at-issue domain name after Complainant acquired rights in the ASSURANT family of trademarks.
Respondent is using the at-issue domain name to address a website which displays links to directories, some of which contain links to competing health insurance providers, including Aetna, UPMC, AARP, and Univera. These directories also contain links directly related to Complainant as well as to unrelated entities.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the ASSURANCE HEALTH mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located outside of the USPTO’s jurisdiction or other jurisdictions where the mark is registered. 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <assuranthealthproviders.com> domain name is confusingly similar to Complainant’s ASSURANT HEALTH mark. The at-issue domain name wholly includes Complainant’s mark without the space, while adding the term “providers,” which is descriptive of Complainant’s business, and appending the generic top-level domain, “.com.” These modifications to the ASSURANT HEALTH mark do nothing to distinguish the at-issue domain name from such mark for the purposes of Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Respondent lacks both rights and 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 respect of the at‑issue 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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “ICS INC.” as the registrant of the disputed domain name and there is no evidence before the Panel which suggests that Respondent is known by the at-issue domain name notwithstanding the contrary indication in the WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to address a website which displays links to directories of competing health insurance providers, including Aetna, UPMC, AARP, and Univera, to directories directly related to Complainant, as well as to directories of unrelated third parties. Using the domain name in this manner is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and 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) bad faith circumstances are present and there is non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent is using the confusingly similar at-issue domain name to redirect Internet users to directories featuring links to third-parties related and unrelated to Complainant, some of whom are Complainant’s competitors. It is without doubt that Respondent earns “click-through” or “referral” fees when an Internet visitor utilizes one of these links. Using the confusingly similar domain name in this manner indicates that Respondent registered the at-issue domain name with the intent to create confusion and false association with Complainant in order to attract Internet users for its own commercial gain. Such circumstances demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant has prevailed against ICS Inc. in at least three other UDRP arbitration proceedings. In each case, Respondent was ordered to transfer the relevant domain name to Complainant. See Assurant, Inc. v. ICS Inc., FA1447091 (June 11, 2012), Assurant, Inc. v. ICS Inc., FA1458722 (Nat. Arb. Forum Sept. 28, 2002), and see Assurant, Inc. v. ICS Inc., FA1460024 (Nat. Arb. Form Sept 5, 2012). Moreover, our reprehensible Respondent has been ordered to transfer offending domain names in numerous UDRP proceedings initiated by complainants other than the instant Complainant. Respondent’s established pattern of registering the trademarks of others in confusingly similar domain names suggests bad faith registration and use of the at-issue domain name under Policy ¶4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) ("It is found and determined that Respondent is in violation of Policy ¶4(b )(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty .com>, <ayhoooreal ty .net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.").
Finally, Respondent was undoubtedly aware of Complainant’s ASSURANCE HEALTH mark when it registered the <assuranthealthproviders.com> domain name. Complainant and its ASSURANCE and ASSURANCE HEALTH trademarks are very well known in the field of health insurance. Respondent’s use of the domain name to address a website linking to competing third parties further suggests that Respondent had knowledge of Complainant and its ASSURANCE and ASSURANCE HEALTH trademarks when it registered the at-issue domain name. Moreover as mentioned above, Respondent has been subject to several previous UDRP proceedings concerning Complainant the ASSURANCE mark. Indeed, there is no plausible explanation as to why Respondent registered the confusingly similar <assuranthealthproviders.com> domain name except to trade on Complainant’s well known marks. Registering a domain name with prior knowledge of another rights therein indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant’s magazine covers an industry towards which Respondent’s services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <assuranthealthproviders.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 17, 2012
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