The Travelers Indemnity Company v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1311001528632
Complainant is The Travelers Indemnity Company (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwtravelers.com> and <wwwtravlers.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2013; the National Arbitration Forum received payment on November 6, 2013.
On November 13, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <wwwtravelers.com> and <wwwtravlers.com> domain names are registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS 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 November 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@wwwtravelers.com, postmaster@wwwtravlers.com. Also on November 13, 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 December 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <wwwtravelers.com> and <wwwtravlers.com> domain names are confusingly similar to Complainant’s TRAVELERS mark.
2. Respondent does not have any rights or legitimate interests in the <wwwtravelers.com> and <wwwtravlers.com> domain names.
3. Respondent registered and uses the <wwwtravelers.com> and <wwwtravlers.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has offered insurance services under the TRAVELERS mark since 1864, and has had an Internet presence through <travelers.com> since December 27, 1996. Complainant has registered ITS TRAVELERS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,611,053 registered August 28, 1990 AND Reg. No. 3,494,648 registered on September 2, 2008).
Respondent registered the <wwwtravelers.com> domain name on October 10, 2003 and the <wwwtravlers.com> domain name on March 12, 2005, and uses them to host links to the websites of Complainant’s competitors such as Progressive, Allstate, Farmers, Metlife, GEICO, and USAA.
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 Panel finds that Complainant’s USPTO registrations establish its rights in the TRAVELERS mark under Policy ¶ 4(a)(i), regardless of where Respondent resides. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Respondent’s <wwwtravelers.com> and <wwwtravlers.com> domain names are confusingly similar to Complainant’s TRAVELERS mark, as the addition of the gTLD “.com” and “www” does not distinguish the domain names from Complainant’s mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003), where the panel held that adding “www” to a domain name was not a meaningful or distinctive modification. The Panel notes that Respondent removed a letter “e” from the TRAVELERS mark in the <wwwtravlers.com> domain name, which also does not create a distinctive domain name. See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Thus, the Panel finds that the <wwwtravelers.com> and <wwwtravlers.com> domain names are confusingly similar to Complainant’s TRAVELERS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent is not known by the <wwwtravelers.com> and <wwwtravlers.com> domain names. The WHOIS information identifies Respondent as the “Fundacion Private Whois / Domain Administrator” privacy protection service. The Panel finds that there is no information in the record demonstrating that Respondent is known by the disputed domain names. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant next argues that Respondent uses the <wwwtravelers.com> and <wwwtravlers.com> domain names to host commercial hyperlink websites that send Internet users through to competing insurers such as Progressive, Allstate, Farmers, Metlife, GEICO, USAA, and others. The Panel agrees and finds that the promotion of competing hyperlinks does not give rise to a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant also claims that Respondent seeks to sell the disputed domain names, providing evidence of a banner viewable on the <wwwtravlers.com> domain name suggesting that the viewer should make a bid on the domain name. The Panel finds that Respondent’s willingness to sell the <wwwtravlers.com> domain name to any willing buyer provides inferential evidence that Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant argues that Respondent’s typosquatting is further evidence that Respondent has no rights or legitimate interest in the disputed domain names. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) where the panel held that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain names at issue. The Panel agrees and finds that Respondent’s typosquatting further demonstrates that Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in the <wwwtravelers.com> and <wwwtravlers.com> domain names. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is apparent through its offer to sell the disputed domain names. The Panel agrees and finds Respondent’s willingness to sell the <wwwtravlers.com> domain name is evidence of bad faith under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Respondent is hosting a website featuring competing hyperlinks through the <wwwtravelers.com> and <wwwtravlers.com> domain names in an attempt to disrupt Complainant’s business. Thus, the Panel finds Policy ¶ 4(b)(iii) bad faith through the promotion of competing businesses at the <wwwtravelers.com> and <wwwtravlers.com> domain names. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is no doubt receiving advertising revenue through the competing hyperlinks at <wwwtravelers.com> and <wwwtravlers.com> domain names’ resolving websites. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found a likelihood of confusion, from which the respondent profited, when the confusingly similar domain name sent Internet users through to a hyperlink directory. The Panel thus finds that Respondent’s use of the <wwwtravelers.com> and <wwwtravlers.com> domain names to host competing hyperlinks constitutes Policy ¶ 4(b)(iv) bad faith.
Respondent’s typosquatting is itself evidence of Policy ¶ 4(a)(iii) bad faith on the part of Respondent. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the TRAVELERS mark prior to registering these domain names based upon the fame of Complainant’s marks and the low probability that domain names such as <wwwtravelers.com> and <wwwtravlers.com> domain names would be thought of without reference to the famous TRAVELERS mark. The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
The Panel finds that Complainant has 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 <wwwtravelers.com> and <wwwtravlers.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 15, 2013
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