Bear River Mutual Insurance Company v. Dzone Inc.
Claim Number: FA1311001528522
Complainant is Bear River Mutual Insurance Company (“Complainant”), represented by Brent T. Winder, Utah, USA. Respondent is Dzone Inc. (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bearrivermutualinsurance.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2013; the National Arbitration Forum received payment on November 6, 2013.
On November 6, 2013, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bearrivermutualinsurance.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@bearrivermutualinsurance.com. Also on November 11, 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 December 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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
A. Complainant contends the following:
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on October 21, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 decides 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 draws 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.”).
Complainant argues that it owns rights in the BEAR RIVER MUTUAL mark through registrations of the mark with the USPTO (e.g., Reg. No. 4,421,156 filed February 21, 2013, registered October 22, 2013). See Complainant’s Exhibit B. The Panel notes that it has previously been held that a complainant’s registration of a mark with the USPTO is sufficient to establish its rights the mark under the Policy. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Previous panels have also held that Policy ¶ 4(a)(i) does not require a complainant to register its mark in the respondent’s home country in order to sufficiently establish its rights in the mark. See, e.g., Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel further notes that it has previously been held that a complainant’s rights in a mark date back to the date that the trademark application was filed with the USPTO. 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”). For the foregoing reasons, the Panel holds that Complainant’s registration of the BEAR RIVER MUTUAL mark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i) dating back to the filing date in February 21, 2013.
Complainant next argues that the <bearrivermutualinsurance.com> domain name is confusingly similar to Complainant’s BEAR RIVER MUTUAL mark because it fully appropriates the mark and merely adds the gTLD “.com” and the descriptive term “insurance.” The Panel also observes that the disputed domain name removes the spaces between the words in the BEAR RIVER MUTUAL mark. The Panel notes that it has previously been held that a domain name’s elimination of spaces between words in a mark and addition of a gTLD do not sufficiently distinguish the domain name from a complainant’s mark pursuant to the Policy. See, e.g., Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Previous panels have also held that a domain name is confusingly similar to a complainant’s mark where the domain name incorporates the mark and adds a term that describes the complainant’s product. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). In the instant proceedings, the Panel notes that the added term “insurance” describes the insurance products or services allegedly offered by Complainant. Accordingly, the Panel holds that the addition of this term is insufficient to distinguish the disputed domain name from Complainant’s BEAR RIVER MUTUAL mark, and the disputed domain name is thus confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
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 argues that Respondent is not commonly known as <bearrivermutualinsurance.com> pursuant to Policy ¶ 4(c)(ii). The Panel notes that previous panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel observes that in the instant proceedings the WHOIS information identifies the registrant of <bearrivermutualinsurance.com> as “Dzone Inc.” The Panel concludes that the WHOIS information tends to suggest that Respondent is commonly known as “Dzone Inc.,” and not as <bearrivermutualinsurance.com>. The Panel also reasonably concludes that nothing else in the record suggests that Respondent is commonly known as <bearrivermutualinsurance.com>, and thus holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the disputed domain name resolves to an inactive website and Respondent has not made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Panel notes that Complainant does not submit a screenshot or other evidence to support this contention. The Panel notes that previous panels have held that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the respondent has not made any active use of the disputed domain name. See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, in view of Respondent's failure to submit a response the Panel accepts Complainant’s unsupported contention that the <bearrivermutualinsurance.com> domain name resolves to an inactive website, and thus the Panel holds that this inactive use is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant next alleges that Respondent has offered the disputed domain name
for sale to the general public and to Complainant, which is further evidence of
Respondent’s lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
See Complainant’s Exhibits D-F. Specifically, Complainant alleges that
Respondent offered the disputed domain name for sale to the general public on
the <Sedo.com> website. See Complainant’s Exhibit D. Complainant alleges
that upon learning that the disputed domain name was for sale, Complainant
offered to purchase it for $100 and Respondent made a counter-offer of $8,000. See
id; see also Complainant’s Exhibit E. Complainant further alleges that
nearly a year later, Respondent again placed the <bearrivermutualinsurance.com>
domain name for sale to the general public on the GoDaddy website. See Complainant’s
Exhibit F. Complainant alleges that it then offered $1,000 for the disputed
domain name, to which Respondent countered with $9,000. See id. In the
face of this evidence, the Panel concludes that Respondent has offered to sell the disputed domain
name to both the general public on the <Sedo.com> and GoDaddy websites as
well as to the Complainant in the form of counter-offers. The Panel notes that
previous panels have held that a respondent’s willingness to sell a disputed
domain name for an amount in excess of its out-of-pocket costs is evidence of
the respondent’s lack of rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See Reese
v. Morgan,
FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s
willingness to sell a contested domain name for more than its out-of-pocket
costs provided additional evidence that Respondent had no rights or legitimate
interests in the contested domain name). In the instant proceedings, the Panel
reasonably presumes that the amounts of $8,000
and $9,000 demanded by Respondent in exchange for the disputed domain name
exceed Respondent’s out-of-pocket costs. Therefore, the Panel holds that Respondent’s offers
to sell the <bearrivermutualinsurance.com> domain name for these
amounts are further evidence of Respondent’s lack of rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant argues that by offering the disputed domain name for sale for an amount in excess of Respondent’s out-of-pocket costs, Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i). As discussed previously, evidence submitted by Complainant suggests that Respondent has offered the disputed domain name for sale to the general public on two auction sites and has also made counter-offers to sell the domain name to Complainant in response to offers initiated by Complainant. See Complainant’s Exhibits D-F. The Panel notes that previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(b)(i) by offering a disputed domain name for sale to the general public where the panel also finds that the respondent registered the disputed domain name with the primary intent of selling it. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i)); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). The Panel also notes that in Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001), the panel found that the respondent demonstrated bad faith under Policy ¶ 4(b)(i) where the complainant offered to purchase the disputed domain name from the respondent for a nominal price and the respondent rejected the complainant’s offer in lieu of greater consideration. See also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”). Accordingly, as the Panel determines that Respondent registered the disputed domain name with the primary intention of selling it, the Panel concludes that Respondent’s offer to sell the <bearrivermutualinsurance.com> domain name to the general public and to Complainant in the form of counter-offers demonstrates Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).
Complainant next alleges that Respondent’s failure to make an active use of the disputed domain name is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). The Panel recalls that Complainant has not submitted evidence to support its contention that the <bearrivremutualinsurance.com> domain name resolves to an inactive website. Nonetheless, the Panel notes that it has previously been determined that a respondent demonstrates bad faith registration and use under Policy ¶ 4(a)(iii) where the domain name resolves to an inactive website and there are no other indications that respondent registered the disputed domain name for a non-infringing purpose. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). In the instant proceedings, the Panel reasonably concludes that nothing on the record suggests that Respondent registered the disputed domain name for a non-infringing purpose. Therefore, as the Panel accepts Complainant’s contention that the disputed domain name resolves to an inactive website in view of Respondent's failure to submit a response, the Panel holds that Respondent has demonstrated bad faith registration and use of the domain name under Policy ¶ 4(a)(iii).
The Panel notes that Complainant does not address the fact that Respondent’s registration of the <bearrivermutualinsurance.com> domain name in October 2012 predates Complainant’s application for the BEAR RIVER MUTUAL trademark with the USPTO in February 2013. The Panel notes that in Suneva Medical, Inc. v. Servet Temir / Nokta France, FA 1425709 (Nat. Arb. Forum April 12, 2012), the panel stated that as a general rule, a respondent does not demonstrate bad faith registration of a disputed domain name where the domain name is registered before the complainant’s trademark existed. However, the Suneva Medical panel went on to say that, “a recent development would suggest that in some specific circumstances… it might be said that a [r]espondent had registered a domain name in bad faith even if it [was] registered before the trademark was registered. That situation is where a [r]espondent has re-registered the domain name in circumstances that would amount to bad faith if they had occurred after the trademark had been registered.” In the instant proceedings, the Panel observes that the WHOIS information suggests that Respondent renewed its registration of the <bearrivermutualinsurance.com> domain name on September 29, 2013, after Complainant’s rights in the BEAR RIVEVER MUTUAL mark arose on February 21, 2013. See Hershey Co., supra (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”). The Panel further notes that Respondent both placed the <bearrivermutualinsurance.com> domain name for sale on the GoDaddy auction site and made the $9,000 counter-offer to Complainant shortly after it re-registered the disputed domain name in October 2013. See Complainant’s Exhibit F. As the Panel concludes that this behavior is indicative of Respondent’s bad faith, the Panel holds that Respondent has demonstrated bad faith re-registration and use of the disputed domain name, and thus holds that Complainant has met its burden of proving bad faith registration and use of the disputed domain name under 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 <bearrivermutualinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: December 11, 2013
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