Kansas City Life Insurance Company v. Joel Ohman / 360 Quote LLC
Claim Number: FA1308001515039
Complainant is Kansas City Life Insurance Company (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon, Missouri, USA. Respondent is Joel Ohman / 360 Quote LLC (“Respondent”), represented by Joel Ohman, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kansascitylifeinsurance.com>, registered with GoDaddy.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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2013; the National Arbitration Forum received payment on August 19, 2013.
On August 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <kansascitylifeinsurance.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 August 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@kansascitylifeinsurance.com. Also on August 22, 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.
A timely Response was received and determined to be complete on August 23, 2013.
Complainant submitted an Additional Submission, which was received and determined to be compliant on August 28, 2013. On August 28, 2013, Respondent served by e-mail a brief “additional submission” which added nothing to its Response and, although not considered, has been reviewed by the Panel.
On September 4, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant uses the KANSAS CITY LIFE INSURANCE COMPANY and KANSAS CITY LIFE marks in connection with its underwriting of life, annuity, accident, and disability insurance. Complainant registered the KANSAS CITY LIFE INSURANCE COMPANY mark with the United States Patent and Trademark Office ("USPTO") in 1998. KANSAS CITY LIFE has been registered since 1976.
Respondent registered the <kansascitylifeinsurance.com> domain name, which takes the entire mark and omits the descriptive term “company” with the addition of the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Nothing suggests that Respondent has been known by the <kansascitylifeinsurance.com> domain name. The WHOIS information lists “Joel Ohman” as the domain name registrant. Complainant has not licensed, authorized, or permitted Respondent to make use of the KANSAS CITY LIFE INSURANCE COMPANY mark in domain names.
Respondent uses the <kansascitylifeinsurance.com> domain name to advertise Complainant’s competitors through hyperlink advertisements. Internet users that enter their ZIP codes into an entry field on the domain name’s website are taken to websites owned by Complainant’s competitors.
Policy ¶ 4(a)(iii)
Respondent’s use of this confusingly similar domain name to shuttle Internet users to competing goods and services underscores an attempt to disrupt Complainant’s business.
Respondent creates a likelihood of confusion because Internet users that access the <kansascitylifeinsurance.com> domain name may be led to believe that Complainant has endorsed, hosted, or created an affiliation with the competing hyperlinks.
Respondent knew full well that Complainant had rights in the mark, yet Respondent uses the mark to host competing hyperlinks anyway.
Respondent registered the <kansascitylifeinsurance.com> domain name on July 20, 2004.
B. Respondent
The Response filed by Respondent does not address the issues set out at
Policy ¶ 4(a) (i) – “Identical or confusingly similar; it barely alludes to ¶ 4(a) (ii) –
“rights in the name.” It addresses the issue of “bad faith,” ¶ 4(a) (iii), in summary
fashion. The Response, in its entirety, to Complainant’s allegations reads as
follows:
There is a city named “Kansas City” in the United States. We own many different city and state insurance domain names (example: kansascityhealthinsurance.com, bostonautoinsurance.com, floridacarinsurance.com, californialifeinsurance.com, etc. etc. etc. ) that have websites on them to provide insurance information and insuarnce quotes geared specifically to residents of those geographic locations.
Obviously, we are not acting in bad faith because we are offering insurance quotes for the residents of Kansas City and other geographic areas. That is our business. Additionally, the Complainant may own USPTO registered trademarks on “KANSAS CITY LIFE®” and “KANSAS CITY LIFE INSURANCE COMPANY®” but they DO NOT own any type of registered trademark whatsoever on the generic commercial term “KANSAS CITY LIFE INSURANCE”
To be quite frank, the Complainant is a large company that sees something they want and so they are wasting both our time and money by filing these frivolous complaints.
C. Additional Submissions
1. Complainant’s Additional Submission
Policy ¶ 4(a)(i)
Internet users will become confused as to the source of the goods and services offered at the <kansascitylifeinsurance.com> domain name due to the confusing similarity between the domain name and the mark. Respondent’s claims as to the presence of the geographic term “Kansas City” are irrelevant, as even Respondent admits that the terms are part of a bigger mark that is identified with the sale of insurance—the mark is not being used solely to identify the physical parameters of Kansas City, Missouri.
Policy ¶¶ 4(a)(ii) and 4(a)(iii)
Complainant generally reasserts the contentions made in the Complaint.
2. Respondent’s Additional Submission
Respondent’s “Additional Submission” has been reviewed; it adds nothing to the addressed in its Response nor did it address the issues raised in Complainant’s
Additional Submission. This e-mail has not been considered.
Certainly the marks, KANSAS CITY LIFE INSURANCE and KANSAS CITY LIFE are either identical to or confusingly similar to the domain name. Respondent does not bother to dispute this factual element of the UDRP Policy.
Respondent, however inartfully, raises the issues of “rights in the name” and “good faith.”
However, Respondent does not claim that it is known by “Kansas City” or that it is even located in “Kansas City.” It merely uses the domain name as an advertising vehicle so that it can direct Internet users to its services as a locator of life insurance policies for the Kansas City resident.
In other words, its Response does not truly address whether it has rights in the name.
This leaves “bad faith.” The Panel must find that the Respondent’s registration and use of the domain name is in bad faith. Respondent knew or should have known that the domain name it selected was identical to Complainant’s marks, both of which predate the domain name by a number of years (in the case of “KANSAS CITY LIFE,” by a number of decades).
The use of the domain name, even if the content is not directly attributable to Respondent, treads all over the rights of the mark holder, since the Complaint and the Response clearly reflect that the intent of the Respondent is to compete with the Complainant by use of a domain name which is identical to the marks or at the very least, confusingly similar.
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.
Complainant has shown that it uses the KANSAS CITY LIFE INSURANCE COMPANY mark in connection with its underwriting of life, annuity, accident, and disability insurance. Complainant registered the KANSAS CITY LIFE INSURANCE COMPANY mark with the USPTO in 1998 and the KANSAS CITY LIFE mark in 1976. In Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006), the panel agreed that a USPTO registration satisfied Policy ¶ 4(a)(i). The Panel agrees that Complainant’s trademark registration satisfies a Policy ¶ 4(a)(i) showing of rights, especially when Respondent as resides in the United States. Therefore, the Panel finds that Complainant has rights in the KANSAS CITY LIFE INSURANCE COMPANY mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent registered the <kansascitylifeinsurance.com> domain name, which takes the entire mark and omits the term “company” while adding the gTLD “.com.” The Panel agrees that the addition of a gTLD is not relevant under the Policy. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). In Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005), the panel agreed that removing a single descriptive term from a mark does not do enough to distinguish the domain name from the complainant’s marks. This Panel concludes that the <kansascitylifeinsurance.com> domain name is identical to or confusingly similar to the KANSAS CITY LIFE INSURANCE COMPANY and KANSAS CITY LIFE marks under Policy ¶ 4(a)(i).
While Respondent contends that the <kansascitylifeinsurance.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifted 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.”).
Nothing suggests that Respondent has been known by the <kansascitylifeinsurance.com> domain name. As Complainant has shown, WHOIS information lists “Joel Ohman” as the registrant. Complainant has stated that it has not licensed, authorized, or permitted Respondent to make use of the KANSAS CITY LIFE INSURANCE COMPANY and KANSAS CITY LIFE marks in domain names. Respondent, “Joel Ohman,” provided no other evidence as to a connection with the domain name. This allows the Panel to infer, as it did in its findings above, that Respondent has no “rights in the name,” and is not commonly known by the 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).
Respondent admits, as Complainant has alleged, that it uses the <kansascitylifeinsurance.com> domain name to advertise its service, which clearly benefit Complainant’s competitors, through hyperlink advertisements for insurance policies. Internet users that enter their ZIP codes into an entry field on the domain name’s website are taken to websites owned by Complainant’s competitors. The domain name resolves to a website that features the trademarks of several of Complainant’s major competitors, along with language such as “Looking for the best Kansas City life insurance rates? As a resident of Kansas City it is important to understand as much as you can about the city of Kansas City in some different ways to find the best company for your life insurance needs.” See Complainant’s Ex. 2D. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel held that there was nothing bona fide under Policy ¶ 4(c)(i), or legitimately noncommercial or fair under Policy ¶ 4(c)(iii), about the use of a confusingly similar to promote directly competing products. The competitive services and goods promoted through the <kansascitylifeinsurance.com> domain name’s hyperlinks illustrate that Respondent lacks any Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in the domain name.
Respondent’s use of this confusingly similar domain name to shuttle Internet users to competing goods and services underscores an attempt to disrupt Complainant’s business. Among the services promoted through the <kansascitylifeinsurance.com> domain name’s website are insurances by “PROGRESSIVE,” “TRAVELERS,” “NATIONWIDE,” “LIBERTY MUTUAL,” as well as other insurance firms. See Complainant’s Ex. 2D. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel agreed that the use of a domain name to explicitly promote the goods of a mark-holder’s competitors is an act of Policy ¶ 4(b)(iii) bad faith use and registration. The <kansascitylifeinsurance.com> domain name is being used to disrupt Complainant’s business in Policy ¶ 4(b)(iii) bad faith.
Respondent also creates a likelihood of confusion because Internet users that access the <kansascitylifeinsurance.com> domain name may be led to believe that Complainant has endorsed, hosted, or created an affiliation with the competing hyperlinks. Various competing services are offered through the <kansascitylifeinsurance.com> domain name’s websites. See Complainant’s Ex. 2D. Previous panels have determined that the use of competing hyperlinks on a confusingly similar domain name evidences Policy ¶ 4(b)(iv) bad faith, and it appears that the Respondent seeks to trick Internet users into associating the competing goods/services with those offered or endorsed by the complainant. See 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).”). The Panel therefore finds bad faith on the part of Respondent under Policy ¶ 4(b)(iv).
Respondent knew or should have known that Complainant had rights in the mark, yet Respondent used the mark to host competing hyperlinks. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, here, even without actual knowledge, the Panel finds that Respondent, in its Response, exhibited no concern with its use of the mark(s) in direct conflict with the policies expressed in ¶ 4(a). However, see Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); as to the duty to investigate existing marks when registering a domain name, see Free Geek, Inc. v. FreeGeek.com c/o Nameview Inc. Whois Identity Shield , FA1011001360890, (Jan. 31, 2011) (no duty to investigate when mark registered after domain name registered when domain name renewed)..
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kansascitylifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant .
/s/ R. Glen Ayers
R. Glen Ayers, Panelist
Dated: September 26, 2013
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