Assurant, Inc. v. edward james
Claim Number: FA1208001460027
Complainant is Assurant, Inc. (“Complainant”), represented by Jason M. Sneed of SNEED PLLC, North Carolina, USA. Respondent is edward james (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com>, registered with 1API GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2012; the National Arbitration Forum received payment on August 27, 2012.
On August 31, 2012, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 September 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@easuranthealth.com, postmaster@wwweassuranthealth.com, postmaster@assuranthealt.com, and postmaster@assurantheath.com. Also on September 6, 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 October 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant uses the ASSURANT HEALTH mark to provide insurance and business services.
2. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT HEALTH mark (e.g., Reg. No. 2,974,177 registered July 19, 2005).
3. Respondent registered the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names on March 13, 2012.
4. Respondent’s <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names are confusingly similar to Complainant’s ASSURANT HEALTH mark.
5. Respondent has no rights or legitimate interests in respect of the domain names.
6. Respondent is not known by the disputed domain names and is not permitted to use Complainant’s ASSURANT HEALTH mark.
7. Respondent uses the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names to resolve to websites that host competing hyperlinks, which is not an active use of the domain names.
8. The domain names have been registered and are being used in bad faith.
9. Respondent’s failure to make an active use of the disputed domain names is evidence of bad faith registration and use.
10. Respondent had constructive knowledge of Complainant’s rights in the ASSURANT HEALTH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that provides insurance, business and related services.
2. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ASSURANT HEALTH mark (e.g., Reg. No. 2,974,177 registered July 19, 2005).
3. Respondent registered the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names on March 13, 2012. The domain names resolve to websites that contain links to the products of competitors of Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts that it uses the ASSURANT HEALTH mark to provide insurance and business services. Complainant provides the Panel with evidence of its USPTO trademark registration for the ASSURANT HEALTH mark (e.g., Reg. No. 2,974,177 registered July 19, 2005). See Complainant’s Exhibit B. While the Panel notes that Respondent resides or operates in China, the Panel determines that Complainant’s USPTO trademark registration for the ASSURANT HEALTH mark sufficiently demonstrates Complainant’s rights in the mark for the purpose of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); 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).
The next question that arises is whether the disputed domain names are identical or confusingly similar to the ASSURANT HEALTH mark. In that regard, Complainant avers that Respondent’s <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names are confusingly similar to Complainant’s ASSURANT HEALTH mark. In comparing the disputed domain names and Complainant’s mark, the Panel notes that the disputed domain names all contain misspelled versions of Complainant’s mark, such as adding a letter, removing a letter, and/or removing the period between the “www” prefix and Complainant’s mark. The Panel concludes that these misspellings fail to distinguish the disputed domain names sufficiently from Complainant’s mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also 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 and was confusingly similar). The Panel notes that all of the disputed domain names contain the generic top-level domain (“gTLD”) “.com” and remove the space from between the terms of the mark. The Panel determines that the addition of a gTLD, and the removal of a space are irrelevant to a Policy ¶ 4(a) (i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore holds that Respondent’s <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names are confusingly similar to Complainant’s ASSURANT mark according to Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ASSURANT HEALTH trademark and to use it in its domain names , making only minor spelling changes to the mark;
(b) Respondent has then used the disputed domain names to resolve to websites with links to the products of competitors of Complainant;
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also alleges that Respondent is not known by the disputed domain names and is not permitted to use Complainant’s ASSURANT HEALTH mark. The Panel notes that the WHOIS information for the disputed domain names identify “edward james” as the registrant of the domain names. The Panel also notes that Respondent did not respond to the Complaint and, therefore, did not present any evidence that Respondent is commonly known by the disputed domain names. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names pursuant to Policy ¶ 4(c) (ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant also argues that Respondent uses the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names to resolve to websites that host competing hyperlinks. Complainant provides the Panel with screenshots for the <easuranthealth.com> and <wwweassuranthealth.com> domain names, which the Panel notes support Complainant’s assertion regarding the hosting of competing hyperlinks. See Complainant’s Exhibits M-N. The evidence does not demonstrate such hosting with respect to the <assuranthealt.com> or <assurantheath.com> domain names. On balance, however, Panel accepts Complainant contentions as to the <assuranthealt.com> and <assurantheath.com> domain names and finds that Respondent’s use of the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names to host competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s bad faith registration and use of the domain names is demonstrated by Respondent’s hosting of competing hyperlinks leading to products being offered in competition to those of Complainant. The Panel accepts this submission, as the hosting of competing hyperlinks indicates that Respondent is attempting to benefit commercially from Internet user confusion as to Complainant’s affiliation with the disputed domain names. Moreover, the evidence in general of Respondent’s modus operandi shows that Respondent registered and uses the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names in bad faith under Policy ¶ 4(b) (iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Secondly, Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the ASSURANT HEALTH mark. Arguments based on constructive notice are not generally accepted as sufficient to show bad faith. However, the Panel finds that, as Complainant and its business and trademarks are so well-known, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a) (iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ASSURANT HEALTH mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <easuranthealth.com>, <wwweassuranthealth.com>, <assuranthealt.com>, and <assurantheath.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 2, 2012
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