Travel Insured International, Inc. v.
International Medical Group, Inc. c/o David Girot
Claim Number: FA0508000545210
PARTIES
Complainant
is Travel Insured International, Inc. (“Complainant”),
represented by Elizabeth A. Alquist, of Day, Berry & Howard LLP,
CityPlace, Hartford, CT 06103.
Respondent is International
Medical Group, Inc. c/o David Girot (“Respondent”), represented by Mary Jane Frisby, of Barnes & Thornburg LLP, 11 S. Meridian St., Indianapolis, IN
46204-3535.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <itravelinsured.com>,
registered with Register.com.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Diane
Cabell, and David Miranda as Panelists, Richard Hill as Presiding Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 24, 2005.
On
August 23, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the <itravelinsured.com>
domain name is registered with Register.com and that the Respondent is the
current registrant of the name. Register.com
has verified that Respondent is bound by the Register.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
August 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
19, 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@itravelinsured.com by e-mail.
A
timely Response was received and determined to be complete on September 19,
2005.
A
timely Additional Submission from Complainant was received and determined to be
complete on September 26, 2005.
On September 27, 2005, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Diane Cabell and David Miranda as Panelists, and Richard Hill
as Presiding Panelist.
A timely Additional Submission from Respondent was
received and determined to be complete on September 29, 2005.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
Respondent
requests that the Panel dismiss the Complaint and find Reverse Domain Name
Hijacking.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
Travel Insured International, Inc., was founded in 1993 and is one of today’s
most recognized travel insurance companies, providing a full range of
services. Complainant registered the
<travelinsured.com> domain name in 1997.
It owns the trademark TRAVEL INSURED INTERNATIONAL. This mark was granted in 2004 with a first
use date in 1994. The application for
registration of the mark was filed in 2003.
The
contested domain name <itravelinsured.com>, was registered by
Respondent in 2000. Respondent sells
travel insurance at this website.
Respondent has a registered mark ITRAVELINSURED, issued in 2005 with a
first use date in 2000.
Complainant
alleges that the contested domain name is confusingly similar to its mark
because it differs by the relatively minor addition of the letter “i.” It further alleges that many travel agents
have been confused by the contested domain name, and that at least one travel
agent was actually confused after being contacted by the Respondent.
Complainant
alleges that its own mark has priority over Respondent’s mark, that
Respondent’s mark is confusingly similar to its own mark and that Respondent is
benefiting from trading on its goodwill.
Complainant has initiated various legal actions to cancel Respondent’s
mark. Accordingly, argues Complainant,
Respondent has no legitimate rights in the contested domain name.
Further,
Complainant alleges that Respondent has registered and is using the contested
domain name in bad faith, by using it to attract Internet users to its website
for commercial gain by capitalizing on the goodwill of Complainant’s mark and
on the likelihood of confusion between Complainant’s mark and the contested
domain name.
B.
Respondent
Respondent
does not contest most of the factual allegations made by the Complainant. It offers travel and trip-cancellation
insurance underwriting and administration services at its website. It is incorporated under the state laws of
Indiana as ItravelInsured, Inc.
Respondent
denies that the only difference between its mark and Complainant’s mark is the
addition of the letter “i.”
Complainant’s mark is TRAVEL INSURED INTERNATIONAL, in contrast,
Respondent’s domain name is <itravelinsured.com>.
Respondent
applied for registration of the mark ITRAVELINSURED in 2004, after the
application filed by Complainant for its marks. Respondent notes that, when its mark was granted, the US Patent
and Trademark Office did not cite Complainant’s marks. Thus, it alleges, the Patent and Trademark
Office did not consider the marks to be confusingly similar.
According
to Respondent, it is not surprising that the US Patent and Trademark Office did
not consider the marks to be confusingly similar, given the marks’ obvious
differences. First, Respondent’s domain
name begins with the letter “I,” which transforms the mark’s sound, meaning,
connotation, and appearance. The mark
suggests to consumers a play on words by creating the phrase “I travel
insured.” At the same time, “i” is a
common prefix used for services advertised on the Internet to connote the word
“information.” Complainant’s mark
TRAVEL INSURED INTERNATIONAL has none of these connotations. Thus the letter “i” is integral to
Respondent’s mark, as it creates a unique commercial impression and meaning.
Finally,
alleges Respondent, the word INTERNATIONAL is the dominant portion of
Complainant’s mark, since the words TRAVEL and INSURED contain no trademark
significance when used in connection with travel insurance. Respondent’s mark does not contain the word
INTERNATIONAL.
Respondent
denies that there has been confusion among consumers of travel insurance during
the five plus years that the companies have coexisted.
According
to Respondent, Complainant’s request for relief must be denied, because
Respondent has legitimate rights in the contested domain name. iTravelInsured, Inc. is incorporated under
the state laws of Indiana and is a wholly-owned subsidiary of International
Medical Group, Inc. Respondent owns a U.S. Trademark Registration
for ITRAVELINSURED (Reg. No. 2930426) and has been using the mark in interstate
commerce since at least as early as March 28, 2000 in connection with travel
and trip-cancellation insurance underwriting and administration services. A trademark registration is grounds for
finding legitimate rights in a domain name.
See, e.g., Helen of Troy Ltd. v.
Mailadmin, Ltd. and Vitali Fed, Case No. D2005-0371 (WIPO Arbitration and
Mediation Center).
Respondent
admits that Complainant’s trademark registrations suggest that Complainant
began using its trademarks before Respondent began using its own, different
trademark and domain name. However,
because the marks are different, there is no issue of priority. In addition, Respondent denies that it had
actual knowledge of Complainant’s domain name <travelinsured.com> at the
time it registered <itravelinsured.com>.
Respondent
denies that it has or will trade on the goodwill created by Complainant’s
marks. Respondent operates a legitimate
business, and it uses its website to promote that legitimate business. Respondent trades upon its own registered
trademark and the goodwill associated with Respondent’s trademark inures
exclusively to the benefit of Respondent.
According
to Respondent, the Complaint must fail because Respondent owns legitimate
rights in its <itravelinsured.com> domain name. According to the Policy, the following
circumstances, in particular but without limitation, if found by the Panel to
be proved based on its evaluation of all evidence presented, shall demonstrate
Respondent’s rights or legitimate interests to the domain name for purposes of
Paragraph 4(a)(ii):
(a) Before
any notice to Respondent of the dispute, Respondent’s use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(b) Respondents
(as an individual, business, or other organization) have been commonly known by
the domain name, even if you have acquired no trademark or service mark rights.
Respondent
satisfies both of these circumstances and more. Respondent has used the <itravelinsured.com> domain
name in connection with its website offering bona fide travel insurance
services.
Respondent
also does business as iTravelInsured, Inc.
iTravelInsured, Inc. is the legal name of Respondent’s wholly-owned
subsidiary. Therefore, Respondent has
common law trademark and trade name rights in the iTravelInsured mark and is
known by that name.
Further,
Respondent owns a U.S. Trademark Registration for its ITRAVELINSURED mark,
which is identical to its domain name.
A registration on the principal register of trademarks of the U.S.
Patent and Trademark Office is “prima facie evidence of the validity of the
registered mark and of the registration of the mark, of the registrant’s
ownership of the mark, and of the registrant’s exclusive right to use the
registered mark in commerce on or in connection with the goods or services
specified in the certificate, subject to any conditions or limitations stated
in the certificate.” 15 U.S.C. §
1057(b).
Moreover,
the Patent and Trademark Office did not cite either of Complainant’s marks
against Respondent’s application to register ITRAVELINSURED. Because Respondent has shown that it is the
registered proprietor of a U.S. Trademark for ITRAVELINSURED, Respondent has a
legitimate right in respect of the domain name in dispute. See Prisma Presse v. Valco S.R.L. Unipersonale (WIPO Case No.
DBIZ2002-00271, August 19, 2002).
C.
Additional Submissions
Complainant
alleges that there is no evidence to suggest that the US Patent and Trademark
Office actually considered whether its marks are confusingly similar to
Respondent’s mark and reaffirms its contention that the marks are indeed
similar.
Complainant
contests that Respondent has been known by the name of “iTravelInsured” for the
entire time that the domain name has been registered, stating that this name
was first used in 2004. Prior to that
time, the name of the company was Global Marketing Connections Group (GMCG).
Furthermore, at the time that the domain name was registered, William Dismore,
a current senior manager with iTravelInsured, Inc. and previously the President
of GMCG, was fully aware of the existence of Travel Insured International and
its position in the marketplace. Mr.
Dismore knew or should have known of Travel Insured’s common law rights in the
trademark TRAVEL INSURED. These facts
provide additional support for the conclusion that Respondent’s predecessor,
GMCG, registered the domain name in bad faith.
Concerning
the matter of Reverse Domain Name Hijacking, Complainant alleges that it is
simply not plausible to find that the Complainant initiated this proceeding in
bad faith in the face of evidence of actual confusion in the industry caused by
Respondent’s use of Complainant’s mark in its domain name in direct competition
with Complainant. Further evidence of
Complainant’s good faith in bringing this action may be found in the legal
actions filed in US courts against the Respondent, alleging various
infringements of trademark and unfair competition laws.
Respondent
contests the allegation that it was not known by the name “iTravelInsured”
until 2004. Although the corporate
name of the original registrant of <itravelinsured.com> was Global
Marketing Connections Group, Inc. (GMCG), the company did not do business under
that name at the <itravelinsured.com> website. Instead, it operated using the d/b/a
“iTravelInsured.Com” from the time it first launched the <itravelinsured.com>
website in early 2000. After
International Medical Group, Inc. purchased iTravelInsured.Com in 2004, the
company’s corporate name was changed to iTravelInsured, Inc. However, at
all times that the company has been in operation, it has used the name
“iTravelInsured” in connection with its business.
Respondent
denies that it knew about Travel Insured International when the domain name was
registered, and that therefore the registration was made in bad faith. The “evidence” for this assertion is the
statement of Travel Insured International’s Peter Gehris concerning an alleged
meeting that Mr. Gehris attended with Mr. Dismore “sometime in the 1999-2000
timeframe.” This vague, unfounded, and
unsupported statement is hardly evidence to show what Mr. Dismore “knew,” or
when he knew it. It certainly is not
evidence that the domain name was registered in bad faith on January 19,
2000. In fact, Mr. Dismore emphatically
disagrees that the domain name was registered for any improper purpose.
FINDINGS
Respondent has rights in the registered
trademark ITRAVELINSURED and conducts a legitimate business using the contested
domain name.
Complainant knew of these rights when it
initiated these proceedings.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The Panel need not consider this element,
for the reasons set forth below.
The domain name is the subject of a US
federal trademark registration, owned by the Respondent, whose mark exists
independently from Complainant’s mark.
The fact that the Complainant is contesting the validity of the
Respondent’s mark is irrelevant in these proceedings.
The closest equivalent to a legislative
history for the Policy can be found in the 30 April 1999 Final Report of the
WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy
(available online at: http://wipo2.wipo.int/process1/report/doc/report.doc
). This report states at
paragraph 172:
… good
faith disputes between competing right holders or other competing legitimate
interests over whether two names were misleadingly similar would not fall
within the scope of the procedure.
The domain name was registered and is
being used to operate a legitimate business.
Therefore, in accordance with Paragraph
4(c) of the Policy, the Respondent has a legitimate interest in the contested
domain name.
Since the Panel holds that the Respondent
has a legitimate interest in the contested domain name, it also holds that its
registration and use were not made in bad faith.
Paragraph 1 of the Rules defines Reverse
Domain Name Hijacking:
Reverse Domain Name
Hijacking means using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.
The general conditions for a finding of
bad faith on the part of the Complainant are well stated in Smart Design LLC
v. Carolyn Hughes D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an
unjustifiable Complaint with malice aforethought qualifies, as would the
pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline
International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney
Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000)
(where the condition is stated as “the respondent must show knowledge on the
part of the complainant of the respondent’s right or legitimate interest in the
disputed domain name and evidence of harassment or similar conduct by the
complainant in the face of such knowledge”), which in turn cites Plan
Express Inc. v. Plan Express D2000-0565 (WIPO, July 17, 2000).
A majority of the Panel notes that
Complainant clearly indicates in its Complaint that is was aware of
Respondent’s registered mark, which is identical to the contested domain
name. Thus, it should have been aware
at the outset that its Complaint must fail.
Further, notes the majority, after
Respondent stressed that it had rights and legitimate interests in the
contested domain name in its Response, Complainant persisted by filing an
additional submission, in which submission it made allegations concerning
Respondent’s good faith.
As pointed out above, the scope of
proceedings under the Policy is narrow, and this is not the venue in which to
resolve complex issues of trademark priority, trademark interference, or unfair
competition. Such matters must be left
to national courts.
Further, Complainant can get relief
concerning the use of the contested domain name from national courts, if it
believes that such use violates national trademark or unfair competition
laws. Indeed, according to the
documents submitted by Complainant to this Panel, Complainant has asked
national courts to prevent Respondent from using the contested domain name.
A majority of the Panel holds that
bringing to this venue matters which are clearly outside the narrow scope of
the policy—in the face of clear knowledge that the Respondent has a registered
trademark for the disputed domain name—and persisting in the action by filing
an additional submission, constitutes an improper action, and harassment, which
amount to Reverse Domain Name Hijacking.
One member of the Panel disagrees with the finding of Reverse Domain
Name Hijacking.
DECISION
For
the reasons given above, the Panel concludes that relief shall be DENIED. The Complaint is DISMISSED.
A
majority of the Panel concludes that the Complainant has engaged in Reverse
Domain Name Hijacking.
Richard Hill, Presiding Panelist
Diane Cabell & David Miranda,
Panelists
Dated: 11 October 2005
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