The Penn Mutual Life Insurance Company v. On behalf of Domain Name Owner This Domain Is For Sale / Visit the domain for more information
Claim Number: FA1608001687161
Complainant is The Penn Mutual Life Insurance Company (“Complainant”), represented by George Anthony Smith of Howson & Howson LLP, Pennsylvania, USA. Respondent is On behalf of Domain Name Owner This Domain Is For Sale / Visit the domain for more information (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mypennmutual.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2016; the Forum received payment on August 5, 2016.
On August 8, 2016, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <mypennmutual.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2016 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@mypennmutual.com. Also on August 9, 2016, 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.
A timely Response was received and determined to be complete on August 15, 2016.
On August 24, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hugues G. Richard as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends the following
In relation to Policy ¶ 4(a)(i):
Complainant has rights in the PENN MUTUAL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,947,231, registered on April 19, 2011). Respondent’s <mypennmutual.com> domain name is confusingly similar to the PENN MUTUAL mark because it contains the mark, less the space between the words of the mark, combined with the word “my” and the generic top-level domain (“gTLD”) “.com.”
In relation to Policy ¶ 4(a)(ii):
Respondent has no rights or legitimate interests in the <mypennmutual.com> domain name. Respondent fails to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains only an offer to sell the domain name.
In relation to Policy ¶ 4(a)(iii):
Respondent registered and uses the <mypennmutual.com> domain name in bad faith because it obtained the domain name shortly after information became public related to Complainant’s filing of the “MyPennMutual.com” mark with the USPTO and then Respondent listed the domain name for sale.
B. Respondent contends the following
In relation to Policy ¶ 4(a)(i):
The <mypennmutual.com> domain name is not confusingly similar to the PENN MUTUAL mark because “Penn” is a common state abbreviation, the domain is comprised of three distinct words, the differences between the domain and the mark do not lead to confusion, and search engines do not associate the domain with Complainant.
In relation to Policy ¶ 4(a)(ii):
Respondent uses the <mypennmutual.com> domain name and resolving website to give an example of the business in which Respondent operates, including domain name brokerage.
In relation to Policy ¶ 4(a)(iii):
Complainant has not provided proof that information related to its pending trademark filing had been made available at the time the <mypennmutual.com> domain name was registered. Respondent does not advertise sale prices on the resolving website and has not contacted Complainant in an attempt to sell the domain, but rather uses the website to promote its own services without creating confusion for consumers seeking Complainant.
Complainant is a long-established life insurance company. It has rights in the PENN MUTUAL mark, as it was registered with USPTO on April 19, 2011 (Registration number 3,947,231).
An application for the “MyPennMutual.com” mark has been filed at the USPTO (File number 87/108285) under instructions of the Complainant on July 19, 2016.
The <mypennmutual.com> domain name was registered by the Respondent on July 22, 2016.
On August 5, showing different link options, the web page related to the <mypennmutual.com> domain name was offering the <mypennmutual.com> domain name for sale.
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.
Complainant has rights in the PENN MUTUAL mark through its registration with the USPTO (Registration number 3,947,231), which was registered on April 19, 2011 and which it uses for services including annuity underwriting and issuing and administration of life insurance, as it appears at Exhibit A of the Complaint. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.).
Respondent’s <mypennmutual.com> domain name is confusingly similar to the PENN MUTUAL mark because it contains the entire mark, less the space between the words of the mark (it is common knowledge that there are never spaces in domain names), combined with the word “my” and the gTLD “.com.” Therefore, Panel finds a great degree of similarity between the domain name and the mark. As Complainant states, these alterations are only “minor differences and additions.” They do not sufficiently differentiate the domain name and the mark to avoid confusion. The Panel thus concludes that the <mypennmutual.com> domain name is confusingly similar to the Complainant’s PENN MUTUAL mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Respondent fails to use the <mypennmutual.com> domain name to provide a bona fide offering of goods or services (under Policy ¶ 4(c)(i)) or a legitimate noncommercial or fair use (under Policy ¶ 4(c)(iii)) because the resolving website contains only an offer to sell the domain name as it appears on the screenshot taken on August 5, 2016 and provided by Complainant at Exhibit B of the Complaint. According to the evidence, Respondent makes no other use of the domain name that would demonstrate any rights or legitimate interest in it. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
Moreover, the Panel notes that the available ICANN WHOIS information lists “On behalf of Domain Name Owner This Domain Is For Sale” as the Registrant of the domain name. The fact that Respondent does not claim to be known by the domain name also works against Respondent in order to find any rights or legitimate interests in the domain name. Based on the evidence, Respondent is not known by the <mypennmutual.com> domain name (under Policy ¶ 4(c)(ii)). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
The Panel was satisfied by the prima facie case established by Complainant, that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Furthermore, because it has not successfully discharged itself of its burden to prove the opposite, the Panel concludes Respondent has no rights nor legitimate interests in the <mypennmutual.com> domain name, under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Before deciding on the issue whether Respondent has registered and uses the <mypennmutual.com> domain name in bad faith under Policy ¶ 4(a)(iii), the Panel reminds the parties that even if the three circumstances enumerated at Policy ¶ 4(b) certainly consist of bad faith behaviors, they do not limit the Panel in finding bad faith in other circumstances.
Even though the Respondent is correct in saying the Complainant did not provide any hard evidence as to how and when its filing for the “MyPennMutual.com” mark application at the USPTO (File number 87/108285) has been made available to the public, the Panel is satisfied that this filing was made on July 19, 2016 and Respondent itself does not oppose this fact. Not more than three days later, on July 22, 2016, Respondent registered the <mypennmutual.com> domain name. Not later than on August 5, 2016 (the Complainant contends as early as of July 26, a fact Respondent does not oppose, but Exhibit B of the Complaint shows August 5), the resolving website was offering the domain name for sale. The Panel is deeply concerned by the concomitance of these three events, and even more given the following facts.
The Panel finds relevant to take into consideration the fact that Complainant is a long-established insurance company that, as it appears from the USPTO certificate at Exhibit A of the Complaint, has been continuously using the mark since 1847, which represents an impressive 168 years period of use. A certain notoriety must necessarily result from that.
Moreover, as stated in the first section of the Discussion, the <mypennmutual.com> domain name presents a great degree of similarity with Complainant’s PENN MUTUAL registered mark, an observation that shall not be diminished in importance for the purpose of the bad faith criteria analysis.
Considering the not very credible reasons given by the Respondent for having registered a domain name so confusingly similar with the Complainant’s PENN MUTUAL registered trademark, the Panel finds that whether or not the Respondent knew of the application to register the trademark “MyPennMutual.com” at the time it registered its domain name, is not determinative of the issue.
It is the constellation of facts the Panel has considered in the present case which are determinative. The Panel has great difficulty seeing nothing but a mere coincidence in the above described sequence of events. The Panel is of the opinion that the Respondent registered the domain name most likely knowing that it would create confusion with the Complainant‘s registered trade mark PENN MUTUAL.
Based on the preponderance of evidence favoring the Complainant, the Panel concludes that Respondent registered and uses the <mypennmutual.com> domain name in bad faith under 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 <mypennmutual.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: September 6th, 2016
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