Kansas City Life Insurance Company v. Bryan Winstanley / Winstanley Internet Sales
Claim Number: FA1405001560359
Complainant is Kansas City Life Insurance Company (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon, Missouri, USA. Respondent is Bryan Winstanley / Winstanley Internet Sales (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kansascity-lifeinsurance.org>, registered with GoDaddy.com, LLC (R91-LROR).
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 20, 2014; the National Arbitration Forum received payment May 20, 2014.
On May 20, 2014, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <kansascity-lifeinsurance.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2014, 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@kansascity-lifeinsurance.org. Also on May 22, 2014, 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 June 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant’s life insurance company is engaged in underwriting of life, annuity, accident, and disability insurance.
2. Complainant has rights in the KANSAS CITY LIFE INSURANCE COMPANY mark based on its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,126,594 registered Jan. 6, 1998).
3. Respondent’s <kansascity-lifeinsurance.org> domain name is confusingly similar to Complainant’s KANSAS CITY LIFE INSURANCE COMPANY mark.
a. Respondent’s disputed domain name incorporates Complainant’s KANSAS CITY LIFE INSURANCE COMPANY mark while omitting the term “company.” Respondent additionally adds a hyphen and the generic top-level domain (“gTLD”) “.org.”
4. Respondent has no rights to or legitimate interests in the <kansascity-lifeinsurance.org> domain name.
a. Nothing suggests that Respondent has been known by the <kansascity-lifeinsurance.org> domain name. The WHOIS information lists “bryan winstanley” 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.
b. Complainant has not authorized or licensed Respondent to use any of Complainant’s marks.
c. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent uses the <kansascity-lifeinsurance.org> 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.
ii. Respondent appears to be profiting through the generation of click-through revenue derived when Internet users, looking for Complainant, mistakenly visit Respondent’s website.
5. Respondent registered and is using the <kansascity-lifeinsurance.org> domain name in bad faith.
a. Respondent uses the disputed domain name to resolve to a website displaying links to competitors of Complainant, thus disrupting Complainant’s legitimate business.
b. Respondent registered and is using the disputed domain name to attract Internet users to its website with the intent to confuse them as to Complainant’s affiliation with the resolving website, and thereby commercially gain.
c. Respondent had knowledge of Complainant and its marks at the time Respondent registered the disputed domain name. Complainant states that Respondent registered the disputed domain name May 14, 2011, long after Complainant’s 1998 registration date for its mark.
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or interests to the mark or disputed domain name.
Respondent registered a domain name confusingly similar to Complainant’s protected mark.
Respondent registered and uses 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar
Complainant claims 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 (Reg. No. 2,126,594 registered Jan. 6, 1998). The Panel notes that Respondent resides in Canada according to the WHOIS record. Nonetheless, previous panels have determined that a complainant’s registration with a trademark agency is sufficient to establish the complainant’s rights in the registered trademark irrespective of whether the respondent resides in the jurisdiction of the registration agency. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “ [the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Consistent with such precedent, the Panel finds that Complainant’s USPTO registrations establish Complainant’s rights in the KANSAS CITY LIFE INSURANCE COMPANY mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <kansascity-lifeinsurance.org> domain name is confusingly similar to Complainant’s KANSAS CITY LIFE INSURANCE COMPANY mark, as it incorporates Complainant’s KANSAS CITY LIFE INSURANCE COMPANY mark while omitting the term “company.” Complainant also states that Respondent adds a hyphen and the gTLD “.org.” Previous panels have determined that such alterations are insufficient to differentiate the resulting domain name from the incorporated mark pursuant to Policy ¶ 4(a)(i). For example, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded that adding a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. Further, 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 distinguish the domain name from the complainant’s mark. Panels have also concluded that adding a hyphen to a complainant’s mark is not sufficient to differentiate it. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore finds that Respondent’s <kansascity-lifeinsurance.org> domain name is confusingly similar to Complainant’s KANSAS CITY LIFE INSURANCE COMPANY mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 has no rights to or legitimate interests in the <kansascity-lifeinsurance.org> domain name. Complainant explains that nothing suggests that Respondent has been known by the <kansascity-lifeinsurance.org> domain name, as the WHOIS information lists “bryan winstanley” as the domain name registrant. Complainant asserts that it has not licensed, authorized, or permitted Respondent to make use of the KANSAS CITY LIFE INSURANCE COMPANY mark in domain names. The Panel thus finds that when Respondent is listed in the WHOIS information as “bryan winstanley,” and provides no other evidence as to a connection with the domain name, it can be inferred that Respondent 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).
Complainant further contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent uses the <kansascity-lifeinsurance.org> domain name to advertise to and on behalf of Complainant’s competitors through hyperlink advertisements. Complainant asserts that 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 Panel notes that Respondent’s resolving website displays a fill in box indicating “Enter Zip Code” and “Get My Quotes.” The Panel observes that Respondent’s resolving website displays various links and trademarks for third-party companies that compete with Complainant, some of which include: “Life Insure,” “GreatLife,” “Intelliquote,” NAA Life,” “New York Life,” and “GerberLife.” See Complainant’s Exhibit 2D. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel held that nothing existed to show bona fide use under Policy ¶ 4(c)(i), or to demonstrate a legitimately noncommercial or fair use under Policy ¶ 4(c)(iii). Those references to use of a confusingly similar domain name to promote directly competing products was not a bona fide offer of goods or services. The Panel here agrees that the competitive services and goods promoted through the <kansascity-lifeinsurance.org> 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.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and is using the <kansascity-lifeinsurance.org> domain name in bad faith. Complainant contends that Respondent uses the disputed domain name to resolve to a website that redirects Internet users to websites based on a zip code, and that results in a display of links to competitors of Complainant, thereby disrupting Complainant’s legitimate business. The Panel notes that Complainant’s Exhibit 2D shows the various third-party insurance companies that are displayed on Respondent’s resolving website. 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 Panel agrees that the <kansascity-lifeinsurance.org> domain name is being used to disrupt Complainant’s business in Policy ¶ 4(b)(iii) bad faith.
Complainant further contends that Respondent registered and is using the <kansascity-lifeinsurance.org> domain name to attract Internet users to its website in order to confuse them as to Complainant’s affiliation with the resolving website. The Panel recalls that Complainant’s Exhibit 2D, and the competing hyperlinks featured on the resolving website shows the entities reached by Respondent’s site. Previous panels have determined that the use of competing hyperlinks on a confusingly similar domain name evidences Policy ¶ 4(b)(iv) bad faith, because it appears that the respondent seeks to mislead Internet users into associating the competing services or goods with those offered or endorsed by the complainant, resulting in commercial profit for respondent. 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 that Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Complainant additionally claims that Respondent had knowledge of Complainant and its marks at the time Respondent registered the disputed domain name. Complainant states that Respondent’s disputed domain name was created May 14, 2011, long after Complainant’s 1998 registration date. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s protected rights and in bad faith under Policy ¶ 4(a)(iii). 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."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <kansascity-lifeinsurance.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 27, 2014
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