Liberty Mutual Insurance Company v.
Watch My Domain c/o Nick M.
Claim Number: FA0611000844657
PARTIES
Complainant is Liberty
Mutual Insurance Company (“Complainant”), represented by Christopher Sloan, of Liberty Mutual Group,
175 Berkeley Street, Boston, MA 02117.
Respondent is Watch My Domain c/o Nick M. (“Respondent”), alias Naresh Malik, 522 Shantivan MHADA, Oshiwara
Andheri (W), Mumbai, Maharashtra 400 053, INDIA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwlibertymutualinsurance.com>,
registered with Lead Networks Domains Pvt.
Ltd.
PANEL
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.
Carol M. Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on November 17,
2006; the National Arbitration Forum received a hard copy of the
Complaint on November 27, 2006. The Complaint was amended to more completely
name the Respondent; to list a single location of Mutual Jurisdiction and to
attach a copy of the ICANN Policy.
On December 6, 2006,
Lead Networks Domains Pvt. Ltd. confirmed
by e-mail to the National Arbitration Forum that the <wwwlibertymutualinsurance.com> domain name is registered
with Lead Networks Domains Pvt. Ltd. and
that the Respondent is the current registrant of the name. Lead Networks
Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On December 11, 2006,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@wwwlibertymutualinsurance.com
by e-mail.
A timely Response was received and determined to be
complete on January 2, 2007.
On January 8, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Carol M. Stoner, Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Liberty Mutual Insurance Company contends
as follows: The term LIBERTY MUTUAL is a federally registered and protected
trademark of Liberty Mutual Insurance Company which conducts business
operations in nineteen countries and the fifty states of the United
States. Liberty Mutual Insurance Company
(hereinafter “Complainant”) is a member of the Liberty Mutual Group which is
one of the largest multi-line insurers in the property and casualty field with
over 39,000 employees in over 900 offices worldwide. Complainant contends that they have used the
term LIBERTY MUTUAL in connection with a variety of products and services in
the insurance and financial services industry in the United States since 1919
and internationally since 1993. The
trademarks have acquired substantial goodwill and are valuable intellectual
property assets of the Company.
Complainant further contends that the trademark
LIBERTY MUTUAL (design plus words) is listed on the Principal Register of the
United States Patent and Trademark Office, Registration No. 1,405,249 as of
August 12, 1986; and that the trademark LIBERTY MUTUAL (as a typed drawing) is
listed on the Principal Register of the United States Patent and Trademark
Office, Registration No. 2,734,195 as of July 8, 2003. Both trademarks are filed under International
Class Code 036 for financial services.
In addition to its US operations, Complainant contends
that it began operations (with corresponding websites) in several Latin
American countries in 1995 including
Argentina, Brazil, Chile, Columbia and Venezuela, and
has expanded into several countries in Europe and Asia.
Complainant further contends that LIBERTY MUTUAL is a
registered or pending mark under the “financial services and insurance” class
in countries including: The European Community, Argentina, Australia, Brazil,
Canada, China, Columbia, India, Ireland, Japan, Mexico, Singapore, Switzerland,
Thailand, Turkey, and Vietnam.
B. Respondent
Respondent, Watch My Domain c/o Nick M, (hereinafter “Respondent”) contends as follows: Complainant has not made out a case under the Uniform Domain Name Dispute Resolution Policy; Complainant has withheld facts of the case; Complainant by an e-mail dated October 19, 2006, informed Respondent about the trademark they held; Respondent by e-mail dated October 19, 2006 asked the Complainant to reimburse him of documented out-of-pocket expenses and Complainant on same date declined to make said payments; the Respondent offered to transfer the domain name to the Complainant on payment of the out-of-pocket expenses and an additional reimbursement of legal fees of these proceedings; the Respondent states that he is well within his rights as per Policy ¶ 4b(i) to ask for out-of-pocket expenses; Respondent states that he was not aware of the trademarks of Complainant; that said domain name was registered for many years prior to his registration in 2005, and Complainant had not launched any proceedings on said domain name; that the cases mentioned are sub judice in the Honorable Courts and hence, no reference should be made to them until they are decided; that the Respondent has not registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor for valuable consideration in excess of documented out-of-pocket expenses directly related to the domain name; and finally, that Complaint should be dismissed with costs.
FINDINGS
Complainant has established that the domain name <wwwlibertymutualinsurance.com> registered
by Respondent is confusingly similar to the LIBERTY MUTUAL registered trademarks
of Complainant. Respondent has no rights
or legitimate interests in the domain name <wwwlibertymutualinsurance.com>.
Respondent has registered and is
using the domain name <wwwlibertymutualinsurance.com>
in bad faith. As such, the Panel
finds that the relief requested by Complainant shall be granted and
accordingly, the domain name <wwwlibertymutualinsurance.com>
shall be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 submitted extrinsic evidence
sufficient to support that it has established trademark rights in the LIBERTY
MUTUAL mark through registration of the mark with the USPTO (Reg. No. 1,405,249
issued August 12, 1986 and Registration No. 2,734,195 issued July 8,
2003). Complainant’s rights in these
marks predate Respondent’s registration of the <wwwlibertymutualinsurance.com> domain name on September
14, 2005. See Am. Online, Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the
mark.”).
Complainant also has common law rights to the term
LIBERTY MUTUAL as Complainant has been using the term LIBERTY MUTUAL
continuously for nearly ninety (90) years in multiple media outlets; and has
owned and operated the websites <libertymutual.com> and
<libertymutualinsurance.com>, among several others, since 1996.
Complainant argues that Respondent’s <wwwlibertymutualinsurance.com> domain
name is confusingly similar to Complainant’s LIBERTY MUTUAL mark, because
Respondent’s domain name incorporates Complainant’s mark in its entirety and
adds the letters “www” and the term “insurance,” which describes Complainant’s
field of business. The Panel finds that
Respondent’s additions to Complainant’s registered mark do not sufficiently
differentiate the confusingly similar aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See
Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000)
(finding that the respondent’s domain name <wwwbankofamerica.com>
is confusingly similar to the complainant’s registered trademark BANK OF
AMERICA because it “takes advantage of a typing error (eliminating the period
between the www and the domain name) that users commonly make when searching on
the Internet”); see also Space Imaging LLC v. Brownell, FA 0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also
Brown and Bigelow Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that the <hoylecasino.net> domain name is confusingly similar to
the complainant’s HOYLE mark, and that the addition of “casino” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity).
Complainant has alleged that Respondent does not have
rights or legitimate interests in the <wwwlibertymutualinsurance.com>
domain name. Once the Complainant makes
a prima facie case in support of its allegations, the burden shifts to
Respondent to prove that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that, where the complainant has asserted that respondent does not have rights
or legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv. Group Ltd. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances,
the mere assertion by the complainant that the respondent does not have rights
or legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent has offered no
evidence and indeed the Panel has found no evidence in the record suggesting
that Respondent is commonly known by the disputed domain name or LIBERTY MUTUAL
or LIBERTY MUTUAL INSURANCE marks. The Respondent is not an agent, broker or
representative of LIBERTY MUTUAL and has no license, grant, or authority to
solicit or sell LIBERTY MUTUAL insurance products or to use the LIBERTY MUTUAL
trademark in commerce. Thus, the Panel
rules that Respondent has not established rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name); see also
Gallup Inc. v. Amish County Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Broadcom Corp.
v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
Furthermore, Complainant asserts that Respondent is
using the <wwwlibertymutualinsurance.com>
domain name to redirect Internet users interested in Complainant’s products and
services to Respondent’s website. Panel
notes that Respondent’s website includes references to the LIBERTY MUTUAL
trademark in the site’s header, text and metadata. This website attempts to legitimize the use
of the LIBERTY MUTUAL trademark with an unauthorized link to the LIBERTY MUTUAL
homepage, which is scattered among misleading links to competitors of LIBERTY
MUTUAL including Allstate, GEICO and Progressive.
The Panel finds that Respondent’s use of a domain name
that is confusingly similar to Complainant’s LIBERTY MUTUAL mark to redirect
Internet users interested in Complainant’s products and services to
Respondent’s website is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo and Co. v. Lin Shun Shing,
FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a
domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor
a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii) because the
registrant presumably receives compensation for each mis-directed Internet
user); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of {Complainant’s}
SAFLOK mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”).
The Panel finds that Respondent’s registration and use
of a domain name, that is confusingly similar to Complainant’s mark, is a surreptitious
casting and luring of Internet users to Respondent’s website for commercial
gain, and thus blatant evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the
domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also eBay, Inc. v. Progressive Life Awareness Network,
D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is
taking advantage of the recognition that eBay has created for its mark and
therefore profiting by diverting users seeking the eBay website to the
respondent’s site).
The Panel finds that Respondent registered and is
using the confusingly similar domain name <wwwlibertymutualinsurance.com>
primarily for the purpose of siphoning-off would be customers of Complainant’s
products and services to the pipeline of Respondent’s rogue website. Said website features products and services
that compete with Complainant, as well as an unauthorized link to Complainant. Respondent’s parasitic promotion of its own
competitive services caused foreseeable disruption of the business of a
competitor, which evidences bad faith registration and use under Policy ¶
4(b)(iii). See S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
the respondent acted in bad faith by attracting Internet users to a website
that competed with the complainant’s business); see also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)); see also Gorstew Ltd. v. Satin Leaf, Inc., FA
95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com>
and <sandalsagent.com> from the respondent travel agency to the
complainants, who operated Sandals hotels and resorts).
Furthermore, the Panel finds that Respondent is
engaging in typosquatting, by intentionally omitting the period after the “www”
in its domain name of <wwwlibertymutualinsurance.com>,
thus setting a trap for the “www unwary” and a profit for the clever
captor. This typosquatting was primarily
for the purpose of disrupting Complainant’s business and is therefore, inherent
and egregious evidence of Respondent’s bad faith registration and use, pursuant
to Policy ¶ 4(a)(iii). The Panel in Black
and Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003),
found bad faith where the respondent registered the <wwwdewalt.com>
domain name, because the respondent was “engaging in a practice to ensnare
those individuals who forget to type the period after the “www” portion of the
web-address and diverting them to a search engine webpage for its monetary
benefit.” See Nat’l Ass’n of Prof’l
Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting...is the intentional misspelling of words with [the] intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors. Typosquatting is inherently parasitic
and of itself, evidence of bad faith.”).
Having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwlibertymutualinsurance.com>
domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: January 21, 2007
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