Kansas City Life Insurance Company v. Domain Administrator / Marketing Express
Claim Number: FA1308001515043
Complainant is Kansas City Life Insurance Company (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is Domain Administrator / Marketing Express (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kansascitylife.com>, registered with Rebel.com Corp.
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 August 15, 2013; the National Arbitration Forum received payment on August 19, 2013.
On August 21, 2013, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <kansascitylife.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. 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 August 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2013 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@kansascitylife.com. Also on August 21, 2013, 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 September 11, 2013, 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 Contentions
i. Complainant owns the KANSAS CITY LIFE mark through its trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,031,699, registered January 27, 1976).
ii. Complainant uses the marks in connection with the business of underwriting life, annuity, accident and disability insurance. Complainant was incorporated in the state of Missouri, USA, in 1895, and since then has acquired a nationwide reputation for its services.
iii. Complainant uses the <kclife.com> domain name to conduct its business online.
i. Policy ¶ 4(a)(i)
1. The disputed domain name <kansascitylife.com> is confusingly similar to the KANSAS CITY LIFE mark because the domain name is identical to the mark, merely deleting the spaces between the words, then adding the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the disputed domain name as no available evidence suggests that Respondent has ever been commonly known by the disputed domain name. The WHOIS information demonstrates that Respondent, “Domain Administrator Marketing Express,” is not commonly known by the disputed domain name. Further, Complainant has not licensed or otherwise permitted Respondent to use Complainant’s marks.
2. Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The disputed domain name resolves to a website providing links to Complainant’s direct competitors’ third-party websites. Respondent presumably profits through click-through revenue generated when users click on the links featured on the disputed domain name’s resolving website.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s diversionary use of Complainant’s mark to send users to a website displaying a series of competitor links constitutes a disruption of Complainant’s business and is therefore evidence of bad faith.
2. Respondent registered the domain name for the primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. This is evidence of Respondent’s bad faith.
3. Respondent registered the disputed domain name in bad faith because Respondent had knowledge of Complainant’s rights in the KANSAS CITY LIFE 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 claims to own the KANSAS CITY LIFE mark through its trademark registration with the USPTO (Reg. No. 1,031,699, registered January 27, 1976). Complainant uses the mark in connection with the business of underwriting life, annuity, accident and disability insurance. Complainant argues that the USPTO registration is sufficient to establish rights in the marks for purposes of the instant proceeding. Registrant purports to live in the Cayman Islands. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel determined that a “USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.” The Panel therefore determines that Complainant’s registration with the USPTO is sufficient to establish rights in the marks pursuant to Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <kansascitylife.com> is confusingly similar to the KANSAS CITY LIFE mark because the domain name is identical to the mark, merely deleting the spaces between the words. Previous panels have agreed that the elimination of spacing is insufficient to negate confusing similarity under Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark … does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds that the disputed domain name <kansascitylife.com> is confusingly similar to the KANSAS CITY LIFE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as no available evidence suggests that Respondent has ever been commonly known by the disputed domain name. Complainant contends that the WHOIS information demonstrates that Respondent, “Domain Administrator / Marketing Express,” is not commonly known by the disputed domain name. Further, Complainant contends that it has not licensed or otherwise permitted Respondent to use Complainant’s mark. The Panel notes that Respondent has failed to submit a Response to refute Complainant’s contentions. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant asserts that the disputed domain name resolves to a website providing links to Complainant’s direct competitor’s third-party websites. Further, Complainant contends that the links divert users to Complainant’s competitors’ websites. The Panel notes that Complainant has provided evidence of screenshots of the resolving and reachable pages, which promote links to competitors of Complainant in the life insurance field, including Amica, AAA, Globe Life, and Colonial Life Insurance. Further, Complainant indicates that Respondent likely profits through click-through revenue generated when users click on the links featured on the resolving website. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use in comparable circumstances. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found 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 was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. This Panel similarly finds that a domain name that resolves to a website featuring competitors of Complainant does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s diversionary use of Complainant’s mark to send users to a website displaying a series of competitor links constitutes a disruption of Complainant’s business and, is therefore, evidence of bad faith. Previous panels have found evidence of bad faith disruption where, as here, the respondent promotes links to competitors of the complainant. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Therefore, the Panel finds evidence of Respondent’s bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered the domain name for the primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. To this point, Complainant also asserts that Complainant receives click-through fees from the linked websites. Further, Complainant notes that the resolving website features links to third-party websites that are direct competitors of Complainant. In light of the circumstances, Complainant urges a finding of bad faith under Policy ¶ 4(b)(iv). In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names. As Complainant has included evidence that the resolving site promotes links to competitors in the field of life insurance, from which Respondent likely profits, the Panel finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name in bad faith because Respondent had knowledge of Complainant’s rights in the KANSAS CITY LIFE mark. Given the full incorporation of the KANSAS CITY LIFE mark in the disputed domain, and the insurance-related content on the resolving page, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the mark at the time Respondent registered the <kansascitylife.com> domain name, and finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
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 <kansascitylife.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 24, 2013
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