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and Mediation Center
Acuity, Inc. v. Netsolutions Proxy Services
Case No. D2005-0564
1. The Parties
The Complainant is Acuity, Inc., , Sheboygan, Wisconsin, United States of America, represented by Whyte Hirschboeck Dudek, SC, United States of America.
The Respondent is Netsolutions Proxy Services, Hong Kong, SAR of China.
2. The Domain Names and Registrar
The disputed domain names <acuityinsurence.com> and <acuityinsurnace.com>
are registered with Fabulous.com Pty Ltd (Fabulous.com).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2005. On May 31, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue. On June 7, 2005, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2005.
The Center appointed Adam Samuel as the sole panelist
in this matter on July 7, 2005. The Panel finds that it was properly constituted.
The Panel has submitted the Statement of Acceptance and Declaration of Impartiality
and Independence, as required by the Center to ensure compliance with the Rules,
4. Factual Background
The Complainant is an insurance company in the United States of America which also offers various brokerage services to customers interested in insurance, savings and investments.
It has service marks registered with the U.S. Patent and Trademark Office for the name ACUITY in relation to insurance-underwriting services and claims appraisal services in a variety of insurance fields, dated July 6, 2004. It has the same, dated June 15, 2004, for brokerage of mutual funds and annuities and savings and loan services. It has two further registrations for ACUITY & DESIGN issued on November 5, 2002, and June 17, 2003, covering the same fields.
It offers these types of services through its website
5. Parties’ Contentions
The Complainant owns U.S. federal rights for the use of the trademark ACUITY and ACUITY & DESIGN. It uses the mark ACUITY through its website “www.acuity.com” to promote and sell its various insurance services.
The Complainant alleges that the Respondent is typo-squatting by adding to the Complainant’s trademark two common misspellings of the word insurance. The Respondent’s sites provide links to many of the Complainant’s competitors.
The Respondent has routinely done this with other insurance companies, registering <trinityinsurence.com>, <infinityinsurence.com>, <centuryinsurence.com> and <allstateinsurnace.com>.
The Respondent has no legitimate interests in the “Acuity” name. The Respondent registered the disputed domain names on August 26, 2004, and September 1, 2004, within three months of the Complainant’s trademark registrations.
The Complainant alleges that the use of these sites is designed to divert traffic from potential ACUITY customers who mistype the word “insurance” to other websites in order to earn profit for the Respondent. All these points, the Complainant argues, demonstrate bad faith registration and use.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the domain namea in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names were registered and are being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The Complainant has a service mark ACUITY. “Acuityinsurence” and “Acuityinsurnace” involve using that name and adding a misspelling of the word insurance, the field in which the Complainant operates.
Essentially, there are two points here that are well-established in UDRP Panel decisions. First, where a domain name takes a mark of a company and then adds words descriptive of services it provides, the result is a domain name that is confusingly similar to the mark concerned. Secondly, typosquatting, the practice of misspelling an element of the mark, has consistently been regarded as creating domain names confusingly similar to the relevant mark.
As the panel said in Deutsche Bank Aktiengesellschaft v New York TV Tickets
Inc., WIPO Case No. D2001-1314:
“A disputed domain name which consists of the
Complainant’s mark plus the addition of a descriptive word linked to the
services that the Complainant markets can be confusingly similar to a mark.
See Harrods Ltd v AB Kohler & Co - (WIPO
Case No. D2001-0544) decision July 31, 2001, over the names <harrodswatch.com>
and <harrodsjewellery.com>. PBS Bank Schwetz A.G. v Tuzen (WIPO
Case No. D2001-1311) is a case where the word ‘bank’ was added
in the disputed domain name to the registered mark PBS. The Complainant was
a well-known supplier of banking services. The Panel held that it was the juxtaposition
of the word ‘bank’ with the letters of the mark which changed the
whole complexion of the domain name from being one depicting anything at all
to one connected with a banking institution.
There is a further reason for finding confusing similarity. In the Panel’s view, this is a case of ‘typosquatting’ where the domain name is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user – particularly when the mark is another language from that of the user’s mother tongue.
See for example, DaimlerChrysler Corporation v.
Worshiping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO
Case No. D2000-1272 (mark: Chrysler; domain names: crysler, chrisler, chrystier
or christler) and Telstra Corporation Ltd v. Warren Bolton Consulting Pty
Ltd., WIPO Case No. D2000-1293 (mark:
bigpond; domain name: big pons).”
The Administrative Panel in Ross-Simons, Inc. v.
Domain.Contact ,WIPO Case No. D2003-0994).
reached the same conclusion where, as in this dispute, the descriptive word
linked to the trademark was incorrectly spelt with regard to some of the domain
names in dispute even though the mark was accurately reproduced. It said:
“The other three disputed domain names (<ross-simons-diamonds.com>, <ross-simonsdimonds.com>, <ross-simon-diamonds.com>) comprise the Complainant's mark entirely or a slight variation of it, and add the word ‘diamonds’ or a misspelling of that word (dimonds). The sale of diamonds is associated with the Complainant's business. Therefore, the inclusion of the word ‘diamonds’ (and the misspelling of that word) in these three domain names strengthens the association, and therefore the confusing similarity, between the domain names and the Complainant’s mark.”
For all these reasons, this Panel concludes that the disputed domain names are confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not made any claim that it has any rights or legitimate interests in the domain names. The Complainant says that it has never authorized the Respondent to use the ACUITY name or marks. The Respondent is not known by that name or anything similar.
The Respondent does not appear to be making a use of the disputed domain names in connection with a bona fide offering of goods or services. Basically, its websites seems to be designed to divert people who are interested in services and products of the Complainant and mistype the word “insurance”. It does this by using the Complainant’s service mark.
For these reasons, this Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The two domain names were registered within three months of the Complainant registering the service marks. The Respondent has registered similar typosquatting sites for other well-known U.S. insurers.
The Complainant asserts that the Respondent earns money by diverting business to its competitors. Actually, it has probably no idea what gain the Respondent obtains from its sites. Having said that, it is common practice in the insurance industry for website providers to be paid “per click-through”. So, the Complainant’s assertions seem reasonable.
The fact that the Respondent has registered similar domain names to typosquat on the websites of other well-known U.S. insurers suggests a pattern of behaviour that is not inadvertent but is motivated by a desire to harm these types of companies.
In any event, the Repondent’s motive in registering and using the sites seems to be either to attract Internet users for commercial gain orsimply to disrupt the Complainant’s relationship with its customers or potential customers. Both these motives constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.
For all these reasons, this Panel concludes that the disputed domain names
were registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <acuityinsurence.com> and <acuityinsurnace.com> be transferred to the Complainant.
Date: July 12, 2005