Amerisure Mutual Insurance Company v. 21562719 Ont Ltd
Claim Number: FA1311001532261
Complainant is Amerisure Mutual Insurance Company (“Complainant”), represented by Linda Monge Callaghan of Rader, Fishman & Grauer PLLC, Michigan, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amerisureinsurance.com>, registered with Fabulous.com Pty Ltd.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2013; the National Arbitration Forum received payment on November 27, 2013.
On December 5, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <amerisureinsurance.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 December 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@amerisureinsurance.com. Also on December 9, 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 January 3, 2014, 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 provides a variety of insurance and related services, including property and casualty insurance targeted toward mid-size commercial companies in the manufacturing, construction and healthcare fields. Complainant has been using the AMERISURE mark since at least 1984. Complainant operates its primary website located at <amerisure.com>.
b) Complainant has rights in the AMERISURE mark, used in connection with insurance and related services. Complainant has registrations for the AMERISURE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,343,265 registered June 18, 1985).
c) Respondent’s <amerisureinsurance.com> domain name is confusingly similar to Complainant’s AMERISURE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “insurance.”
d) Respondent does not have any rights or legitimate interests in the <amerisureinsurance.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its AMERISURE mark in any way.
b. Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use. In its Policy ¶ 4(a)(iii) section, Complainant states that Respondent is using the <amerisureinsurance.com> domain name in connection with a website providing information and links to companies in the insurance field. See Complainant’s Exhibit C.
e) Respondent registered and is using the <amerisureinsurance.com> domain name in bad faith.
a. Respondent has been involved in prior UDRP proceedings in which the disputed domain names were ordered to be transferred to the complainants.
b. Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s AMERISURE mark.
c. Respondent had knowledge of Complainant’s AMERISURE mark prior to registering the <amerisureinsurance.com> domain name because of the notoriety and reputation surrounding Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on February 2, 2007.
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 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.”).
Complainant contends it has rights in the AMERISURE mark, used in connection with insurance and related services. Complainant states it has registrations for the AMERISURE mark with the USPTO (e.g., Reg. No. 1,343,265 registered June 18, 1985). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant owns a registration in a different country. See 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the AMERISURE mark under Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <amerisureinsurance.com> domain name is confusingly similar to Complainant’s AMERISURE mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “insurance.” The Panel notes that the disputed domain name also includes the generic top-level domain “.com.” First, the Panel finds that the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. 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)). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <amerisureinsurance.com> domain name is confusingly similar to Complainant’s AMERISURE 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 contends Respondent does not have any rights or legitimate interests in the <amerisureinsurance.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its AMERISURE mark in any way. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the AMERISURE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <amerisureinsurance.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name. In its Policy ¶ 4(a)(iii) section, Complainant states that Respondent is using the <amerisureinsurance.com> domain name in connection with a website providing information and links to companies in the insurance field. See Complainant’s Exhibit C. The Panel notes that the links displayed on the resolving website include “Life Insurance Co,” “Nationwide Insurance,” and “Free Home Insurance Quotes.” Id. Past panels have found that using a confusingly similar domain name to operate a website featuring competing hyperlinks does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making 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 contends Respondent registered and is using the <amerisureinsurance.com> domain name in bad faith. Complainant argues that Respondent has been involved in prior UDRP proceedings in which the disputed domain names were ordered to be transferred to the complainants. The Panel notes that a search for Respondent in the National Arbitration Forum decision database results in nine decisions involving domain names registered by Respondent, all of which were ordered to be transferred to the respective complainants. Past panels have found that a respondent with a record of prior UDRP proceedings that resulted in the transfer of the disputed domain names has demonstrated bad faith registration and use in the instant proceeding by virtue of their adverse URDP proceeding history. 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). Therefore, the Panel finds that Respondent registered and is using the <amerisureinsurance.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent has been involved in prior UDRP proceedings in which the disputed domain names were ordered to be transferred to the complainants.
Complainant states that Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s AMERISURE mark. Complainant notes that Respondent is using the <amerisureinsurance.com> domain name in connection with a website providing information and links to Complainant’s competitors. See Complainant’s Exhibit C. The Panel notes that the links displaying on the resolving website include “Life Insurance Co,” “Nationwide Insurance,” and “Free Home Insurance Quotes.” Id. In previous cases, panels have held that using a confusingly similar domain name to provide competing third-party links, from which the panel presumes the respondent is receiving click-through revenue, demonstrates 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.’”). Therefore, the Panel finds that Respondent registered and is using the <amerisureinsurance.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the resolving website features links to Complainant’s competitors.
Complainant asserts that Respondent had knowledge of Complainant’s AMERISURE mark prior to registering the <amerisureinsurance.com> domain name because of the notoriety and reputation surrounding Complainant’s mark. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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 <amerisureinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: January 8, 2014
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