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and Mediation Center
ING North America Insurance Corporation v. Web Domain Names
Case No. D2006-0455
1. The Parties
The Complainant is Ing North America Insurance Corporation, , Atlanta, Georgia, United States of America, represented by Troutman Sanders, LLP, United States of America.
The Respondent is Web Domain Names, Shanghai, PR, CN, China.
2. The Domain Name and Registrar
The disputed domain name <ingretirment.com> is registered with Moniker
Online Services, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2006. On April 13, 2006, the Center transmitted by email to Moniker Online Services, Inc a request for registrar verification in connection with the domain name at issue. On April 27, 2006, Moniker Online Services, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 April 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2006. The Respondent did not submit a Response. Accordingly, the Center formally notified the Respondent of the consequences of default on May 22, 2006.
The Center appointed Philip N. Argy as the sole panelist
in this matter on June 6, 2006. 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
There being no Response, the following facts are uncontested.
The Complainant is a global financial institution of Dutch origin, established in the United States since 1991, and is one of the 50 largest corporations in the world. The Complainant offers insurance, banking and asset management services including financial and retirement services such as offering and selling life insurance and annuities, and managing and operating retirement plans, pension plans and mutual funds. These services are all offered under the ING mark.
The Complainant has registered numerous trade and service marks which consist of, or include the term “ING”, which the Complainant uses in the United States and internationally in connection with its insurance, banking and asset management services. The marks include:
ING ADVISORS NETWORK
ING FINANCIAL ADVISORS
ING INVESTMENT ADVISOR
ING EQUITABLE LIFE OF IOWA
ING INSTITUTIONAL MARKETS
ING LIFE OF GEORGIA
ING NATIONAL TRUST
ING SECURITY LIFE
ING SOUTHLAND LIFE
ING USG ANNUITY
ING VARIABLE ANNUITIES
The Complainant is also the registrant of the domain name <ingretirementplans.com > which it uses in connection with financial planning, retirement planning, insurance and third party bank marketing services. Additionally, the Complainant and its affiliated companies are also the registrant of a number of other domain names which incorporate the ING mark including <ing.com>, <ingadvisors.com>, <ingamericas.com>, <ingim.com>, <ing-life ofgeorgia.com>, <ing-re.com>, <ing-securitylife.com>, <ingvariableannuities.com>, <ingbank.nl>, <ingbarings.com>, <inglease.com>, <ingdirect.com>, <ing-usa.com>, <ingfunds.com>, <ingaelus.com>, and many others.
The mark ING is readily recognized by the public as identifying the Complainant’s services. As a result of the marks distinctiveness, the ING mark was ranked as one of the 100 most valuable brands in the world by Business Week magazine in 2004.
The Respondent registered the domain name <ingretirment.com> on August 9, 2002.
The Respondent is the registrant of more than 2,000
domain names some of which include or incorporate famous marks, sometimes with
intentional typographical errors, such as <yahoomail.com>, <disneytigercruise.com>
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a mark registered and used by the Complainant, inasmuch as that domain name includes the Complainant’s mark ING and that it is almost identical to the Complainant’s domain name <ingretirementplans.com>.
Specifically, the Complainant cites a prior panel
decision that states that as a rule, when domain names wholly incorporate a
complainant’s mark and only adds a generic word, that is sufficient to
establish confusing similarity of the purpose of the Policy. Further, confusion
may be heightened when the generic word used by the respondent is descriptive
of the complaint’s goods or services marketed in relation to that trade
mark. See Southern Communications Services, Inc. d/b/a Southern Linc v. J
Lee, WIPO Case No. D2005-0212.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
As noted above, the Respondent did not file a Response
to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name and the Complainant’s marks are confusingly similar because confusion would be likely to arise as a result of any use of the disputed domain name by a person with no affiliation with the Complainant.
In that regard, the contested domain name includes the Complainant’s registered mark ING which has clearly acquired requisite secondary meaning and distinctiveness as a result of the Complainant’s extensive used since 1991, and particularly in conjunction with its insurance, banking and asset management services.
The disputed domain name simply tacks on the word “retirement” to the Complainant’s mark, which is a word intimately associated with the services the Complainant provides. The use of a domain name which combines a well known trade or service mark of an entity and a generic word describing the goods or services associated with that entity, is likely to create confusion in an Internet user.
Additionally, the Complainant is the registrant of the domain name <ingretirementplans.com>. The Complainant uses this domain name to promote and provide its services such as financial planning, retirement planning, insurance and third party bank marketing services. The disputed domain name is only a variant of the Complainant’s domain name in that it omits the word “plans”.
There can be no question here that the contested domain name by virtue of its inclusion of the mark ING as well as use of the generic word “retirement” will be likely to cause an Internet user confusion. When confronted with the disputed domain name a user is very likely to think that the Respondent is affiliated in some fashion with the Complainant, when in fact no such relationship exists.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by a respondent, can substantiate the respondent’s right to or legitimate interests in the domain name for the purpose of 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It has been established by WIPO UDRP panels that once a complainant establishes
a prima facie case showing that none of the three circumstances establishing
legitimate interests or rights applies, the burden of proof on this factor shifts
to the respondent to demonstrate a right or legitimate interest in the domain
name. If the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a)(ii) of the Policy (see amongst others Croatia Airlines d.d.
v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455;
Belupo d.d. v. WACHEM d.o.o., WIPO
Case No. D2004-0110).
In the case at hand, it is clear that the Complainant has never authorized or licensed the Respondent to use the Complainant’s mark ING. Furthermore, there is no evidence that the Respondent has been commonly known by or associated with that mark. There is no plausible or legitimate explanation for the Respondent’s registration of the Complainant’s trade mark as a domain name in the “.com” gTLD, especially given that the mark ING has no generic meaning.
The Respondent has yet to provide any basis that would legitimize any claim to the disputed domain name. However, it is extremely unlikely that the Respondent could ever make such a claim. The disputed domain name includes the Complainant’s mark ING under which it has been providing banking, insurance and asset management services since 1991. Additionally, the Complainant is the registrant of a very similar domain name being <ingretirmentplans.com> at which it promotes and provides it retirement planning services.
Further, the Panel finds that the Respondent is intentionally seeking to exploit the confusion created by the use of the domain name to divert Internet users away from the Complainant’s site to the Respondent’s own site for the latter’s own benefit. Whether, as the Complainant surmises, the benefit to the Respondent is by the use of pop-up advertisements and the redirection of users to competitors’ sites in order to receive a commission, or whether the Respondent is seeking to preclude the Complainant from obtaining the domain name unless it or its competitor pays a sufficiently large sum to purchase the name, the ultimate effect is that the Respondent reaps financial benefit. To receive such a benefit is neither a bona fide offering of goods or services nor a legitimate non commercial or fair use.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the contested domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the policy, the Complainant is also required to prove the third element in paragraph 4(a)(iii), namely, that the domain name has been registered and is being used in bad faith.
As previously noted, the Complainant’s mark was registered in 1991 and was one of the world’s most recognized marks prior to the Respondent registering the disputed domain name in August 2001. By registering a domain name which includes the Complainant’s mark with a generic word associated with the Complainant’s services, it can only be assumed that the Respondent has registered the domain name to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name and to attract for commercial gain Internet users to that website.
Further, as previously noted, the Respondent is the owner of over 2000 domain
names, some of which consist of or include famous service or trade marks not
apparently owned by the Respondent. Additionally, the Respondent has previously
been found to register domain names primarily for the purpose of disrupting
businesses and which are clearly designed for commercial gain. See
Sharman License Holdings, Limited v. Web Domain Names, WIPO
Case No. D2004-0821. In light of the above it can be found that the Respondent
has engaged in a pattern of conduct of preventing a trade or service mark owner
from reflecting the mark in a corresponding domain name.
The Panel concludes that the Complainant both registered the disputed domain
name in bad faith and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ingretirement.com> be transferred to the Complainant.
Philip N. Argy
Dated: June 20, 2006