Esurance Insurance Services, Inc. (formerly known as Esurance Inc.) v. HCR Trading c/o Rico Dekker
Claim Number: FA1102001374239
Complainant is Esurance Insurance Services, Inc. (formerly known as Esurance Inc.) (“Complainant”), represented by Alias Encore, Inc., California, USA. Respondent is HCR Trading c/o Rico Dekker (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwesurance.com>, registered with Dotster.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2011; the National Arbitration Forum received payment on February 22, 2011.
On February 23, 2011, Dotster confirmed by e-mail to the National Arbitration Forum that the <wwwesurance.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2011 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@wwwesurance.com. Also on February 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 March 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 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.
A. Complainant makes the following assertions:
Complainant owns the exclusive rights to the ESURANCE mark, which it uses in connection with the operation of its online insurance company.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ESURANCE mark (including Reg. No. 2,673,515, filed February 18, 1999, issued January 14, 2003).
Respondent registered the disputed domain name on April 21, 2000.
The same domain name resolves to a web page featuring third-party pay-per-click links to the websites of other businesses, some of which are in competition with Complainant’s business.
Respondent’s <wwwesurance.com> domain name is confusingly similar to Complainant’s ESURANCE mark.
Respondent does not have any rights to or legitimate interests in the domain name <wwwesurance.com>.
Respondent both registered and uses the <wwwesurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its ESURANCE service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. These rights have effect from the filing date of the mark registration application (in this case February 18, 1999, which predates Respondent’s registration of the disputed domain on April 21, 2000) and exist irrespective of the country in which Respondent resides or operates. See, for example, Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that a complainant’s rights in the KISSES trademark, established through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate respondent’s [domain name] registration”); further see Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Accordingly, Complainant has established its rights in the ESURANCE service mark under Policy ¶ 4(a)(i).
Respondent’s <wwwesurance.com> domain name is confusingly similar to Complainant’s ESURANCE mark. The disputed domain name contains Complainant’s entire mark, merely adding “www” before the mark, and also adding the generic top-level domain (“gTLD”) “.com.” The addition of a “www” with no period, renders the disputed domain name confusingly similar to a Complainant’s mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark from the resulting domain name , and so makes the domain name confusingly similar to the mark).
Similarly, the addition of a gTLD to the mark of another in forming a contested domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights to and legitimate interests in the <wwwesurance.com> domain name. Under Policy ¶ 4(a)(ii), a complainant must make out a prima facie case in support of its allegations on this point, whereupon the burden of proof shifts to a respondent to show that it does have such rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name).
Complainant has made out a prima facie case under this head of the Policy. Owing to the lack of response to the Complaint on the part of Respondent, we are free to conclude that Respondent does not have any rights to or legitimate interests in the <wwwesurance.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to the allegations of a complaint filed under the Policy). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to decide whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent is not, nor has it ever been, authorized to use the ESURANCE mark, and that Respondent has not been commonly known by the Disputed Domain Name. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “HCR Trading c/o Rico Dekker,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the <wwwesurance.com> domain name so as to have established rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain, where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We also observe that Complainant alleges, without objection from Respondent, that Respondent uses the disputed domain name to resolve to a website which displays pay-per-click links, some of which are in competition with Complainant’s business. Such a use is not 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a domain name which is confusingly similar to a complainant’s mark is not 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)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s claim of rights to and legitimate interests in the <bravoclub.com> domain name, which was confusingly similar to a mark in which a complainant had rights, because that respondent was using the domain name to operate a website containing links to various commercial websites competing with the business of that complainant, which was not 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)).
Finally under this head of the Policy, Respondent plainly uses a typo-squatted version of Complainant’s mark as its <wwwesurance.com> domain name. Typo-squatting is further evidence of Respondent’s lack of rights to and legitimate interests in the disputed domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that a respondent’s <wwwdinersclub.com> domain name, a typo-squatted version of a complainant’s DINERS CLUB mark, was evidence that that respondent lacked rights to or legitimate interests in the disputed domain name); to the same effect, see also Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005):
respondent lacks rights and legitimate interests in the … domain name because respondent's addition of the prefix "www-" to complainant's … mark constitutes typosquatting.
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent uses the <wwwesurance.com> domain name to display click-through links, some of which resolve to competitors of Complainant. This disrupts Complainant’s business and is therefore evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using disputed domain names to operate a commercial search engine with links to both the products of a complainant and that complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Internet users are likely to be misled by the confusing similarity between Respondent’s domain name and Complainant’s mark as to the possibility of Complainant’s sponsorship of or other relationship between Respondent and Complainant. Respondent likely profits from this confusion when Internet users access the click-through links featured on the website resolving from the contested domain name. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a contested domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Respondent is engaged in typosquatting by diverting Internet users who likely reach Respondent’s website when they omit typing the period between www and Complainant’s ESURANCE mark. Respondent attempts to profit from this deception. This use of the domain is in bad faith under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003):
Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.
See also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002):
Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <wwwesurance.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 31, 2011
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