Assurant, Inc. v. ICS INC.
Claim Number: FA1206001447017
Complainant is Assurant, Inc. (“Complainant”), represented by Nadya Munasifi Sand of Alston & Bird, LLP, Georgia, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medasurant.com>, registered with Tucows, Inc.
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 June 4, 2012; the National Arbitration Forum received payment on June 4, 2012.
On June 4, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <medasurant.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 June 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@medasurant.com. Also on June 5, 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 July 2, 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 provides insurance and financial services under the ASSURANT mark.
2) Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT mark (Reg. No. 2,543,367 registered February 26, 2002).
3) Respondent registered the <medasurant.com> domain name on February 1, 2012.
4) Respondent’s <medasurant.com> domain name is confusingly similar to Complainant’s ASSURANT mark because the disputed domain name only contains a misspelling of Complainant’s mark combined with the generic term “med.”
5) Respondent does not own any rights in the “Medasurant” name as a trademark, service mark, or trade name.
6) Respondent’s <medasurant.com> domain name resolves to a website containing hyperlinks that resolve to third-party websites, from which Respondent receives click-through fees.
7) Respondent’s hosting of third-party hyperlinks demonstrates Respondent’s bad faith registration and use of the <medasurant.com> domain name.
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 holds a trademark registration with the USPTO for the ASSURANT mark (Reg. No. 2,543,367 registered February 26, 2002). Respondent resides or operates in the Cayman Islands and not within the United States. However, Complainant’s USPTO trademark registration sufficiently demonstrates Complainant’s rights in the ASSURANT mark under Policy ¶ 4(a)(i), regardless of where Respondent resides or operates. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <medasurant.com> domain name is confusingly similar to Complainant’s ASSURANT mark. Complainant claims that the disputed domain name features a misspelling of Complainant’s mark, which is the lack of the second letter “s” found in the mark, and the addition of the generic term “med.” However, Complainant fails to show or even allege why it considers the term “med” to be descriptive with respect to its insurance and financial services. Complainant provided no evidence or arguments of a connection between the term “med” and the services it provides under the ASSURANT mark, even after having been provided with an additional opportunity by this Panel, by interlocutory order, to provide arguments and evidence regarding this issue. The cases cited by Complainant, i.e., Atrium Medical Corp. v. Emir Keklik, FA 1172416 (Nat. Arb. Forum June 18, 2008), Global Rx, Inc. v. destinos universals, FA 445549 (Nat. Arb. Forum May 6, 2005), and Allegen, Inc. v. Medbotox, Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003), are all inapposite since, in each case, the term “med” was found to be descriptive of Complainant’s goods and/or services. Compare Assurant, Inc. v. Shui Lun Alan Tsang, FA 1434340 (Nat. Arb. Forum Apr. 25, 2012), in which the domain <assurantrentersinsurance.net> was found to be confusingly similar to the ASSURANT mark because the term “renters insurance” was descriptive of Complainant’s services under the mark.
Complainant has therefore not satisfied ¶ 4(a)(i) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <medasurant.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: July 30, 2012
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