Liberty Mutual Insurance Company v. c/o Libertymutualcarinsurance.com
Claim Number: FA1012001364049
Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Mary Ellen Morse of Liberty Mutual Insurance Company, Massachusetts, USA. Respondent is c/o Libertymutualcarinsurance.com (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <libertymutualcarinsurance.com>, registered with Dotster.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2010; the National Arbitration Forum received payment on December 17, 2010.
On December 20, 2010, Dotster confirmed by e-mail to the National Arbitration Forum that the <libertymutualcarinsurance.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 December 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2011 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@libertymutualcarinsurance.com. Also on December 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 January 19, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 makes the following assertions:
1. Respondent’s <libertymutualcarinsurance.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark.
2. Respondent does not have any rights or legitimate interests in the <libertymutualcarinsurance.com> domain name.
3. Respondent registered and used the <libertymutualcarinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Mutual Insurance Company, offers a variety of products and services in the insurance and financial services industry. Complainant conducts business operations in over 20 countries and throughout the United States. Complainant owns trademark registrations for the LIBERTY MUTUAL mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,405,249 issued August 12, 1986 and
Reg. No. 2,734,195 issued July 8, 2003.
Respondent, c/o Libertymutualcarinsurance.com, registered the <libertymutualcarinsurance.com> domain name on July 10, 2004. The disputed domain name resolves to a pay-per-click website featuring links to goods and services in competition with Complainant, such as “auto insurance quotes,” “car insurance,” “homeowners insurance,” etc.
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."
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.”).
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 owns trademark registrations for the LIBERTY MUTUAL mark with the USPTO:
Reg. No. 1,405,249 issued August 12, 1986 and
Reg. No. 2,734,195 issued July 8, 2003.
The Panel finds that these USPTO trademark registrations are substantive proof of Complainant’s rights in the LIBERTY MUTUAL mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant alleges that Respondent’s <libertymutualcarinsurance.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark. The disputed domain name includes Complainant’s mark, without the space separating the terms, combined with the descriptive terms “car” and “insurance” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms and a gTLD to Complainant’s mark does not dispel confusing similarity according to Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also finds the omitting the space between terms has no effect on preventing confusing similarity. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that Respondent’s <libertymutualcarinsurance.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent in order to shift the burden of proof to show rights and legitimate interests to Respondent. The Panel finds that Complainant has put forth an adequate case in this instance, but Respondent has failed to respond. As a result of Respondent’s silence, the Panel infers that Complainant’s allegations against Respondent are true and that Respondent lacks rights and legitimate interests. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Complainant asserts that Respondent has no authority, license, or permission to use Complainant’s LIBERTY MUTUAL mark. The WHOIS information for the <libertymutualcarinsurance.com> domain name lists the registrant as “c/o Libertymutualcarinsurance.com,” but there is no other information or evidence in the record showing a connection between Respondent and the disputed domain name. The Panel finds that without other supporting evidence, the presence of the name “Libertymutualcarinsurance.com” in the WHOIS information is insufficient to establish that Respondent is commonly known by the <libertymutualcarinsurance.com> domain name according to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was “not commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name”).
Complainant contends that Respondent’s <libertymutualcarinsurance.com> domain name redirects to a website with links to financial and insurance-related products and services that compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name is therefore not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <libertymutualcarinsurance.com> domain name resolves to a website containing generic links for financial and insurance-related products and services in competition with Complainant, such as “cheap car insurance,” “structured settlement,” and “homeowners insurance.” Featuring such links at a disputed domain name consisting primarily of Complainant’s mark disrupts Complainant’s business as Internet users seeking Complainant’s products will be diverted to website featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).
Complainant argues that Respondent’s incorporation of Complainant’s mark in the <libertymutualcarinsurance.com> domain name intends to attract Internet users seeking Complainant. When the Internet users are diverted to Respondent’s website and then click on any of the third-party links, it is presumed that Respondent is compensated on a pay-per-click basis. Additionally, due to Respondent’s use of Complainant’s mark in the disputed domain name, customers may believe they have reached a website sponsored by or affiliated with Complainant, which could impair Complainant’s reputation. The Panel finds that Respondent’s efforts to mislead Internet users and attract Complainant’s business in order to receive commercial gain constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the Respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <libertymutualcarinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon, Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret)
Dated: January 24, 2011
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