The Hartford Fire Insurance Company v. yoyo.email et al.
Claim Number: FA1408001574384
Complainant: The Hartford Fire Insurance Company of Hartford, Connecticut, United States of America.
Complainant Representative: Fross Zelnick Lehrman & Zissu, P.C. of New York, New York, United States of America.
Respondent: yoyo.email, (Giovanni Laporta), of Bedfordshire, Unknown, United Kingdom.
Complainant Representative: None.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, LLC
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 Examiner in this proceeding.
Bruce E. O'Connor, as Examiner.
Complainant submitted: August 11, 2014
Commencement: August 11, 2014
Response Date: August 24, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant is the owner of U.S. Trademark Registration Nos. 3,630,270 registered June 12, 2009 and 2,264,316 registered July 27, 1999, which protect THE HARTFORD (the "Trademark") for a wide range of insurance and financial services and related promotional goods. Complainant uses the Trademark for such services, as evidenced by its declaration submitted to the Trademark Clearinghouse including a screen shot of a web page at <www.thehartford.com>.
Respondent uses the disputed domain name at a parking web site that includes numerous links to insurance services. That web site displays only the logo of the Registrar.
Complainant contends that:
Because the Trademark is registered with the Trademark Clearinghouse, when Respondent attempted to register the disputed domain name he would have received “a warning notice” from the Clearinghouse. Despite having received this notice, Respondent proceeded with his registration.
Complainant has never granted any license or other permission to Respondent to use the Trademark nor has Respondent been authorized by the Complainant to register or use any domain name incorporating the Trademark. Respondent is not named or commonly known as the Trademark. In fact, Respondent is a serial cybersquatter, having registered hundreds of .email domain names. His company speculatively registered these domains to sell, license or lease to the owners of the respective marks in connection with Respondent’s idea for a new email platform that prior panels have ruled against time and again, stating: “the Respondent has not established beyond bald assertion, how and why he needs to own the registered domain names for the purpose of establishing his intended service."
Respondent's parking page includes a prominent link that solicits offers to sell the disputed domain name. At least six prior URS panels and one UDRP panel have rejected respondent’s intended use of the disputed domain name as part of a new email platform. The address listing in the WHOIS is also false.
Respondent contends that:
There is no point in putting in a defense as no one is going to take any notice of it. The ICANN URS system was designed to help tackle clear cut cases of trademark and domain name misuse and that the URS was not intended for use in proceedings with open questions of fact, contestable issues or more involved legal scenarios. URS Panelists repeatedly continue to ignore the URS rules. Despite hiring experienced URS and UDRP panelists whom say I’m acting with the rules, other URS panelists continue without any direct evidence to find against Respondent.
The majority of URS and UDRP decisions have gone against Respondent resulting in either the suspension, deletion or transfer of domain name assets from Respondent to various trademark owners despite the fact that: 1. Respondent has not used the subject domain names as a web address or to host a website, 2. Respondent has not made the subject domain names visible to the general public, 3. Respondent has not used any trademark protected domain name itself to monetize its service to consumers or trademark owners, 4. Respondent has not solicited any payment to sell, transfer or offer the subject domain name to any trademark owner, 5. Respondent has repeatedly maintained it has no intention to mislead the public in any way. Blatantly and objectively false findings by previous UDRP and URS panelists have now prejudiced all future proceedings as panelists often rely on prior findings in new and future URS and UDRP proceedings. The Complaint's allegation that the address listed in the WHOIS is also fake is a lie. The address listed is our US attorneys.
URS Procedure 1.2.6 requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
There is no genuine issue of material fact regarding the first element of the URS. The registered domain name is confusingly similar to the Trademark that is being used by the Complainant, being distinguished only by the descriptive top level domain ".email" that connotes a very common form of electronic messaging, i.e. electronic mail.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
There is no genuine issue of material fact regarding the second element of the URS. Respondent has set forth no contention as to why it registered or intends to use the disputed domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
There is no genuine issue of material fact regarding the third element of the URS. Although Complainant contends that the offer to sell the disputed domain name at Respondent's web site is evidence of bad faith registration and use, an offer to sell is not by itself sufficient evidence. Other factors must be present that establish Respondent's intent to sell the domain name registration to the trademark owner or to another for valuable consideration in excess of the out-of-pocket costs directly related to the domain name, or to establish Respondent's intent to attract Internet users to Respondent's web site. Those factors are present here.
First, the parking page at Respondent's web site primarily link to insurance-related services. Although Respondent may not have chosen those links, it is responsible for them. This connection of the disputed domain name to others that are in Complainant's core business demonstrates an intent to build up value in excess of the disputed domain name's direct acquisition cost and to divert business to Respondent's web site. Second, the use of the generic top level domain ".email" and its ubiquitous nature in our society does not distinguish in any way the disputed domain name, and reinforces the intent of Respondent to capitalize on the goodwill of Complainant through likelihood of confusion. Third, Respondent's statements in its defense (ignoring the ad hominem attacks on prior panels) are incorrect. The disputed domain name is being used as a web address and is thus public (Respondent has the ability to control whether or not the Registrar sets up a parking page), that parking page is generating revenue for someone if not the Respondent, Respondent has offered to sell the disputed domain name, and Respondent's statement of no intent to deceive is belied by its actions.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<thehartford.email>
Bruce E. O'Connor, Examiner
Dated: August 25, 2014
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