Schwander Insurance Services, LLC c/o Michael Schwander v. Al Perkins
Claim Number: FA1306001503780
Complainant is Schwander Insurance Services, LLC c/o Michael Schwander (“Complainant”), represented by Ian O'Neill of Cooley LLP, Colorado, USA. Respondent is Al Perkins (“Respondent”), Bailiwick of Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <schwanderinsurance.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2013; the National Arbitration Forum received payment on June 7, 2013.
On June 7, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <schwanderinsurance.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 June 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2013 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@schwanderinsurance.com. Also on June 12, 2013, 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 July 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
Policy ¶4(a)(ii): Respondent’s Lack of Rights & Legitimate Interests
Policy ¶4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 notes that Complainant does not allege that it has any trademark registrations, but the Panel agrees that national registrations are not required under the Policy in order for a complainant to assert rights in the claimed mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant claims that it has used the SCHWANDER INSURANCE mark since 2003 in operating his insurance and risk management business. Complainant notes that it used the disputed <schwanderinsurance.com> domain name as the Internet home of his business from the moment of the domain name’s registration until March 1, 2013. Complainant asserts that it currently has 170 clients who use SCHWANDER INSURANCE services. The Panel agrees that Complainant has provided sufficient evidence demonstrating its use of the mark since 2003, such that Complainant has acquired common law rights in its SCHWANDER INSURANCE mark under Policy ¶ 4(a)(i) for its insurance and risk management services. See Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001) (surveying UDRP disputes concerning the use of personal names, the panel found that “where the complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services”).
Complainant notes the <schwanderinsurance.com> domain name, is identical to the SCHWANDER INSURANCE mark, as it only adds the gTLD “.com.” The Panel agrees that when the domain name merely removes the mark’s spacing and adds a gTLD, the domain name is identical to the mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 asserts that Respondent has never been known by this <schwanderinsurance.com> domain name. Complainant argues that the WHOIS information as well as correspondence with Respondent clarifies the fact that Respondent is not known by the name. The Panel notes that the WHOIS information lists “Al Perkins” as the registrant. The Panel concludes that because the WHOIS information does not reflect the disputed domain name, Respondent is not commonly known by the <schwanderinsurance.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant also notes that Respondent registered this domain name on March 14, 2013, 13 days after Complainant inadvertently failed to renew its registration. Complainant provides evidence showing that Respondent informed Complainant via e-mail that the domain name would be dedicated to propagating adult-oriented images unless Complainant paid $5,000.00. The Panel notes that domain name currently reroutes Internet users to a website at <rudespace.com> where explicitly adult-oriented photographs are displayed on the banners, and includes links to adult-oriented galleries, and forum posts that are clearly explicit and sexually graphic. The Panel agrees that the usage of the identical domain name for purposes of providing adult-oriented content is neither bona fide under Policy ¶ 4(c)(i), nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant argues that Respondent is extorting Complainant for $5,000.00. Complainant notes that Respondent demands these fees or else it will continue to use the domain name to post obscene content. The Panel notes that Respondent, through abrasive e-mails to Complainant, demands “$5k.” The Panel agrees that such an excessive demand evidences Policy ¶ 4(b)(i) bad faith on behalf of Respondent. See Ingram Micro Inc v. Noton Inc., D2001-0124 (WIPO Mar. 6, 2001) (finding bad faith registration and use where the respondent attempted to blackmail the complainant into buying the disputed domain names with threats of exposure to the media and adverse publicity to the complainant’s employees and customers); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
Complainant also argues that Respondent’s use of this domain name to propagate adult-oriented content is an illegitimate and bad faith use of a domain name that is identical to Complainant’s mark. The Panel agrees that the use of an identical domain name to send Internet users to adult-oriented content indicates that Respondent’s registration and use is in bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <schwanderinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon Karl V. Fink (Ret.), Panelist
Dated: July 19, 2013
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