C.V. Starr & Co., Inc. and Starr International Company, Inc. v. Martin Guy
Claim Number: FA1502001606759
Complainant is C.V. Starr & Co., Inc. and Starr International Company, Inc. (“Complainant”), represented by Meichelle R. MacGregor of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Martin Guy (“Respondent”), London.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starr-ins.com>, registered with Dynadot, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2015; the Forum received payment on February 25, 2015.
On February 25, 2015, Dynadot, LLC confirmed by e-mail to the Forum that the <starr-ins.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2015 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@starr-ins.com. Also on February 26, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
(i) Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”) (collectively, the “STARR marks”): STARR (e.g., Reg. No. 3,908,296, registered January 18, 2011), STARR SPECIALTY LINES INSURANCE AGENCY, LLC (e.g., Reg. No. 3,871,115, registered Nov. 2, 2010), and STARR SURPLUS LINES INSURANCE COMPANY (e.g., Reg. No. 4,086,596, registered Jan. 17, 2012). The marks are used on or in connection with the underwriting of property, casualty, life, accident, and health insurance and agency services. The <starr-ins.com> domain name is confusingly similar to the STARR marks because the domain name contains the dominant portion of the marks and adds a generic descriptive term and the generic top-level domain (“gTLD”) “.com.”
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent in possession of licensing rights that would allow him to use the STARR marks in domain names. Further, the domain name resolves to a webpage wherein Respondent is attempting to pass himself off as Complainant.
(iii) Respondent has registered and is using the domain name in bad faith. Complainant argues that Respondent has created a website in which Internet users are bound to be confused as to the site’s source or origin, and that Respondent is selling counterfeit services or receiving some other commercial benefit from such use. Further, Respondent registered the domain name with actual and/or constructive knowledge of Complainant’s rights in the STARR marks.
B. Respondent
Respondent failed to submit a timely response. The Panel notes that <starr-ins.com> was registered on August 16, 2011.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 has registered the following marks with the USPTO (collectively, the “STARR marks”): STARR (e.g., Reg. No. 3,908,296, registered January 18, 2011), STARR SPECIALTY LINES INSURANCE AGENCY, LLC (e.g., Reg. No. 3,871,115, registered Nov. 2, 2010), and STARR SURPLUS LINES INSURANCE COMPANY (e.g., Reg. No. 4,086,596, registered Jan. 17, 2012). Complainant also owns a number of other registered trademarks, all featuring “Starr” as the dominant element. See Compl., at Attached Ex. 9. The marks are used on or in connection with the underwriting of property, casualty, life, accident, and health insurance and agency services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <starr-ins.com> domain name is confusingly similar to the STARR marks. Complainant argues that the domain name keeps the dominant portion of the marks and adds a generic term descriptive of the services offered by Complainant. Prior panels have established a confusing similarity where the domain name at issue keeps the dominant element of the mark and adds a term that describes goods or services offered by the complainant. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the domain name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Also, the addition of the gTLD “.com” provides no distinguishing relief for Respondent. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that the disputed domain name is confusingly similar to the STARR marks for purposes of 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 has no rights or legitimate interests in the <starr-ins.com> domain name. Complainant claims that Respondent is not commonly known as the domain name or in possession of licensing rights that would allow Respondent to use the STARR marks in domain names. The Panel notes that “Martin Guy” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is void of any evidence to indicate that Respondent is either commonly known as the domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See 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).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent, through use of the disputed domain name, is attempting to pass itself off as Complainant. The Panel notes that the resolving webpage contains the headers that read “Starr International Insurance (Asia) Limited,” listings of Complainant’s business address in Hong Kong, a statement reading “Copyright© 2010 Starr Insurance Company, Ltd. All rights reserved,” and an application for marine cargo insurance. See Compl., at Attached Ex. 12. As the Panel recognizes from this evidence that Respondent is attempting to pass itself off as Complainant, the Panel finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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)).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. To support this argument, Complainant argues that Respondent has created a website in which Internet users are bound to be confused as to the site’s source of origin, and that Respondent is selling counterfeit services or receiving some other commercial benefit from such use. Complainant’s allegation of the sale of counterfeit goods relates to the aforementioned marine cargo insurance application. See Compl., at Attached Ex. 12. The Panel also notes that Complainant’s STARR marks appear throughout the resolving webpage. See Compl., at Attached Ex. 12. As the Panel finds that this creates a likelihood that Internet users would misunderstand the resolving webpage is sponsored by or affiliated with Complainant, they could infer Policy ¶ 4(b)(iv) bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant asserts that Respondent had actual notice of Complainant’s rights in its STARR marks prior to domain name registration because Respondent included the entire mark in the domain name, added a generic term descriptive of the services offered by Complainant under the marks, and is using Complainant’s marks on the resolving webpage. Complainant states that Respondent at least ought to be held to a constructive notice standard. While Complainant believes that constructive notice is sufficient, the Panel observes that the trend in UDRP proceedings is to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); 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."). However, the Panel agrees that the content of the domain name’s website provides evidence that Respondent knew enough about Complainant’s business to give Respondent the idea to place images of Complainant’s marks on the domain name’s website. As such, the Panel infers that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starr-ins.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 6, 2015
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