Assurant, Inc. v. Shui Lun Alan Tsang
Claim Number: FA1203001434340
Complainant is Assurant, Inc. (“Complainant”), represented by Jason M. Sneed of SNEED PLLC, North Carolina, USA. Respondent is Shui Lun Alan Tsang (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurantrentersinsurance.net>, registered with GoDaddy.com, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2012; the National Arbitration Forum received payment on March 13, 2012.
On March 14, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <assurantrentersinsurance.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2012 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@assurantrentersinsurance.net. Also on March 19, 2012, 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 April 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" 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’s Allegations
1. Complainant owns rights in the ASSURANT mark through its numerous trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,543,367 registered February 26, 2002).
2. Complainant does business under the ASSURANT mark, offering insurance and financial services throughout the United States and globally.
3. Complainant owns the domain name <assurantrentersinsurance.com> (registered March 8, 2007) which redirects visitors to a web page concerning Complainant’s renters’ insurance.
4. Respondent registered the <assurantrentersinsurance.net> domain name on January 9, 2011.
5. Respondent’s domain name resolves to a website which contains advertising for rental and apartment services, as well as links to web hosting information.
6. Respondent had at least constructive knowledge of Complainant’s rights in the ASSURANT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 owns rights in the ASSURANT mark through its many registrations with the USPTO (e.g., Reg. No. 2,543,367 registered February 26, 2002). The <assurantrentersinsurance.net> domain name is confusingly similar to its ASSURANT mark. The addition of the terms “renters” and “insurance” to the ASSURANT mark, which terms are descriptive of Complainant’s services, results in a domain name which is confusingly similar to Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding that the disputed domain name, which contained the complainant’s entire mark and added a descriptive word which was an allusion to the complainant’s area of business, rendered the domain name confusingly similar).
Complainant has therefore satisfied ¶ 4(a)(i) of the Policy.
Complainant argues that Respondent is not commonly known by the <assurantrentersinsurance.net> domain name and has not provided Respondent with authorization to use, register, or own the domain name. The Panel finds that, because Respondent did not submit any evidence that it is commonly known by the disputed domain name or has permission to use the mark, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that by registering a domain name with a mark it was not authorized to use and failing to provide evidence indicating it was commonly known by the domain name, the respondent did not establish rights or legitimate interests in the domain name).
Further, the Panel finds that, by advertising competing services on the resolving website, Respondent is not engaged in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the website under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent had at least constructive knowledge of Complainant’s rights in the ASSURANT mark at the time it registered the <assurantrentersinsurance.net> domain name. The Panel infers that Respondent had actual knowledge of Complainant’s rights, due to Complainant’s prevalent use and its numerous trademark registrations of the ASSURANT mark. Thus, Respondent registered this domain name in bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Complainant asserts, and this Panel finds, that Respondent uses the <assurantrentersinsurance.net> domain name to attract Complainant’s potential customers to Respondent’s own website in order to make a profit by advertising related services. This conduct constitutes bad faith use. See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s disputed domain name competed with the complainant’s business and risked confusing Internet users as to the relationship between the domain name and the complainant, thus demonstrating bad faith).
Thus, Complainant has also satisfied 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 <assurantrentersinsurance.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 25, 2012
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