national arbitration forum

DECISION

 

Fortis SA/NV and Fortis NV v. Chen Huang

Claim Number:  FA0502000420683

 

PARTIES

Complainant is Fortis SA/NV and Fortis NV (“Complainant”), represented by Marsha Stolt, of Moss and Barnett, P.A., 90 South Seventh Street, 4800 Wells Fargo Center, Minneapolis, MN 55402-4129. Respondent is Chen Huang (“Respondent”), P.O. Box 20231, Zengdu, Guangzhou 34264, China 65487.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fortisbenifits.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2005.

 

On February 16, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the domain name <fortisbenifits.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@fortisbenifits.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 18, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

 

1.   Respondent’s <fortisbenifits.com> domain name is confusingly similar to Complainant’s FORTIS mark.

 

2.   Respondent does not have any rights or legitimate interests in the <fortisbenifits.com> domain name.

 

3.   Respondent registered and used the <fortisbenifits.com> domain name in bad faith.

 

B. Respondent failed to submit a response in this proceeding.

 

FINDINGS

Complainants Fortis SA/NV and Fortis NV (collectively “Complainant”) are joint parent companies of a group of international businesses. Complainant is among the largest providers of financial, business, and insurance services. Since at least as early as 1992, Complainant has continuously used the FORTIS mark in connection with its services. Complainant has promoted its mark extensively and holds at least 91 worldwide trademark registrations that incorporate the FORTIS mark, including U.S. Reg. No. 1,902,973 (issued July 4, 1995), which is on the Principal Register of the United States Patent and Trademark Office. Complainant also operates a website at the <fortisbenefits.com> domain name that averages more than 327,412 hits per month.

 

Respondent registered the <fortisbenifits.com> domain name on October 16, 2003. The domain name resolves to a portal page that provides links to a wide array of content, including insurance services that compete with Complainant and online casinos. Respondent is not licensed or authorized to use Complainant’s mark for any purpose.

 

DISCUSSION

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."

 

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.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established that it has rights in the FORTIS mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce since 1992. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that a respondent has the burden of refuting this assumption).

 

The <fortisbenifits.com> domain name is confusingly similar to Complainant’s FORTIS registered trademark because the disputed domain name merely adds a misspelling of the generic word “benefits” and the “.com” generic top-level domain to the mark. The addition of a misspelled generic word and a generic top-level domain do not distinguish the domain name from the mark. Thus, the Panel finds that the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO was not relevant); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contained the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name was confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant was engaged, did not take the disputed domain name out of the realm of confusing similarity); see also Bank of Am. Corp. v. Chen Huang, FA 296592 (Nat. Arb. Forum Sept. 2, 2004) (finding that the <nationsmorgage.com> domain name, which added a misspelling of the generic word “mortgage” to the complainant’s NATIONS mark, was confusingly similar to the mark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Respondent has failed to submit a response in this proceeding. In the absence of a response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Complainant has alleged that Respondent lacks rights and legitimate interests in the <fortisbenifits.com> domain name. Complainant’s submission has gone unopposed and its arguments unrefuted. Further, because Respondent has failed to submit a response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain name. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complainant to be deemed true); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, the respondent failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

 

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) because the domain name is confusingly similar to Complainant’s mark and redirects unsuspecting Internet users to commercial websites that offer products and services that are either unrelated to or in competition with Complainant’s services. Respondent makes opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the FORTIS moniker. Thus, Respondent fails to establish rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where the respondent generated commercial gain by intentionally and misleadingly diverting users away from the complainant’s site to a competing website); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to the respondent’s competing website through the use of the complainant’s mark).

 

No evidence before the Panel suggests Respondent is commonly known by the <fortisbenifits.com> domain name under Policy ¶ 4(c)(ii). The domain name’s WHOIS information indicates that the registrant of the disputed domain name is known as “Chen Huang” and is not known by the confusingly similar second-level domain that infringes on Complainant’s FORTIS mark. Moreover, Respondent is not authorized or licensed to use Complainant’s mark for any purpose. Thus, Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that the respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent makes use of a confusingly similar variation of Complainant’s FORTIS mark to ensnare unsuspecting Internet users. Respondent then redirects the users to a website that provides links to various commercial websites. The Panel infers that Respondent receives pay-per-click fees when Internet users follow the links on its website. Respondent is profiting from the unauthorized use of Complainant’s registered mark in its domain name. Such infringement is what the Policy was intended to remedy and is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if a respondent profits from its diversionary use of a complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

Respondent registered and used a domain name that is confusingly similar to Complainant’s mark for the purpose of directing Internet users to businesses that offer goods and services that compete with Complainant. Respondent’s use of the <fortisbenifits.com> domain name establishes that Respondent registered and used the domain name for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in determining if a domain name has been registered in bad faith, a panel must look at the “totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Respondent’s registration of the disputed domain name, a domain name that is confusingly similar to Complainant’s well-known mark, suggests that Respondent knew of Complainant’s rights in the FORTIS mark. Additionally, Complainant’s trademark registration on the Principal Register of the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark. Moreover, the fact that Respondent’s website provides links to Complainant’s competitors evidences Respondent’s knowledge of Complainant’s rights in the mark. Thus, the Panel finds that Respondent chose the <fortisbenifits.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the complainant’s mark when it registered the subject domain name”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fortisbenifits.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated: April 1, 2005

 

 

 

 

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