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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Guardian Life Insurance Company of America v. Titan Net

Case No. D2006-0568

 

1. The Parties

The Complainant is The Guardian Life Insurance Company of America, New York, United States of America, represented by Winston & Strawn LLP, United States of America.

The Respondent is Titan Net, Eldoret, Kenya.

 

2. The Domain Name and Registrar

The disputed domain name <guardiandentalplan.org> (herein the “domain name in dispute”) is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2006. On May 8, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name in dispute. On May 8, 2006, Intercosmos Media Group d/b/a directNIC.com 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 May 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2006.

The Center appointed J. Nelson Landry as the sole panelist in this matter on June 8, 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, paragraph 7.

 

4. Factual Background

The Complainant, The Guardian Life Insurance Company of America, is a large mutual insurance company in the United States which since 1918 has offered and continues to offer a wide variety of insurance and financial services and since 1952 sells insurance under the GUARDIAN trademarks throughout the United States of America.

The Complainant has been acknowledged by superior ratings from major ratings companies and named as one of the most admired life and health insurance companies by Forbes magazine. With assets over $35 billion it has tremendous financial strength and stability.

The Complainant has promoted and sold dental insurance throughout the United States under the GUARDIAN trademarks since the 1970 decade through Dental Guard preferred provider organization which features an extensive nationwide dental network with over 70,000 provider locations. Through its advertisement including brochures, promotional materials, directories, forms, manuals, and communications to the field force, the trade, policyholders and the public at large and its online dental provider directory, it assists policyholders in locating nearby professional members and dental plans. It has thereby established a significant presence on the Internet, through its extensive and interactive websites “www.guardianlife.com” and “www.guardianinvestor.com” as it appears from exhibits 5 to 117 adduced in evidence.

The Complainant is the holder of more than thirty registrations in the United States for trademarks consisting of GUARDIAN alone or the same in association with descriptive words such as YOUR GUARDIAN FOR LIFE, THE GUARDIAN CASH MANAGEMENT TRUST, THE GUARDIAN ADVANTAGE, THE GUARDIAN CRITICAL DISABILITY SUPPLEMENT, as well as in a particular script or design such as in GUARDIAN & Design for various insurance and financial services (herein the “Trademarks” or “GUARDIAN Trademarks”).

As early as 1963, the United States District Court for the District of Utah gave judicial recognition of Complainant’s Trademarks and acknowledged the long use and extensive advertising of the term “guardian” as well as the secondary meaning it had acquired in the insurance business in the United States. In 1993, the United States District Court for the District of Connecticut held that the GUARDIAN Trademarks enjoyed enormous strength and in 2002, the Trademark Trial and Appeal Board of the United States Patent & Trademark Office held that Complainant had established a family of GUARDIAN Trademarks in the insurance field, which trademarks enjoy considerable renown and are entitled to a very broad scope of protection in the field of insurance.

The domain name in dispute was registered on January 20, 2006, and the website at the said domain name provides links to third party competitor insurance services to Internet users who are seeking information relating to dental and health insurance.

The Respondent is not related to, licensed by, or affiliated with Complainant and the latter has never authorized or granted permission to Respondent to use its Trademark or to obtain the domain name in dispute.

The Respondent has recently been involved in a number of UDRP proceedings wherein the panels held that the Respondent had misappropriated third party famous trademarks. See for example F. Hoffmann-La Roche AG v. Titan Net,, WIPO Case No D2005-1151 and Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has and benefits of valid, enforceable and unchallengeable rights in a family of registered GUARDIAN Trademarks in the United States of America, which are famous by reason of nine decades of common law use before their registration and their extensive and continuous promotion and use, as reflected in the over 100 exhibits adduced in evidence; Sociйtй des Eaux de Volvic v. Volvic Village, WIPO Case No. D2004-1015.

The Complainant represents that the use of a trademark in connection with a generic terms, such as “dental plan” does not avoid confusing similarity since the term “guardian” is the distinctive element of the domain name in dispute. Baccarat SA v. MSL Int’l, Inc., WIPO Case No. D2005-0048, and GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424.

According to the Complainant, by reason of the famous character of its Trademarks within the insurance industry and among the general public, the addition by the Respondent of the descriptive terms “dental plan” to the Trademark does not distinguish Respondent’s domain name from Complainant’s Trademarks, nor does it reduce likelihood of confusion. See Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (hereinafter, Geico) and FINAXA Sociйtй Anonyme v. Peskett, WIPO Case No. D2004-0455 (hereinafter, Finaxa). In fact the phrase “dental plan” is a clear reference to dental insurance plans and these added descriptive words actually enhance likelihood of confusion. See Max Rohr, Inc. v. Puros Dawa HB S.A., WIPO Case No. D2005-0488; Accor v. S1A, WIPO Case No. D2004-0053; Mayflower Transit, LLC v. Jonny Mayflower/Mayflowers Moving, WIPO Case No. D2002-0722 and Accor v. Tigertail Partners, WIPO Case No. D2002-0625.

The Complainant contends that Respondent’s registration and use of the domain name in dispute is designed to cause confusion and to deceive consumers into mistakenly believing that Respondent and its services are offered, authorized, or sponsored by the Complainant or are otherwise connected, associated, or affiliated with the Complainant and that Respondent chose the domain name in dispute in order to capitalize on Complainant’s fame and goodwill and intends to create confusion in the marketplace through its adoption.

The Complainant further contends that the Respondent possesses no rights or legitimate interests in respect of the domain name in dispute, in that it does not underwrite, offer, promote or sell dental insurance under any trademark and observes that the use of the Trademark by the Complainant preceded Respondent’s registration of the domain name in dispute by nearly 90 years. See PepsiCo, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0087 and Chanel, Inc. v. Designer Exposure, WIPO Case No. D2000-1832.

Since the Complainant has never authorized the Respondent to use its Trademarks or to register the domain name in dispute and that the Respondent has not registered or used the name “guardian” as a service mark, nor has it ever been known by this name and that the domain name in dispute is confusingly similar to the Trademarks, Respondent’s use of the domain name in dispute does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Geico, supra and Finaxa, supra.

The Complainant contends that the Respondent registered the domain name in dispute in bad faith to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous Trademarks as to the source, sponsorship, affiliation and endorsement of Respondent’s website and/or the services offered on that website, see Chanel, supra. There is no justification or plausible explanation for Respondent’s unauthorized registration of the domain name in dispute because the name has no value apart from Complainant’s Trademarks. See Modefine, supra.

Considering the assets of the Complainant, its age and status, as one of the oldest and most famous insurance companies in the United States, it is inconceivable to the Complainant that Respondent did not know about Complainant’s Trademarks prior to registering the domain name in dispute. See Sociйtй des Eaux de Volvic, supra ; Modefine, supra and Dr. Ing. h.c. F. Porsche, supra. The Complainant submits that the fact that Respondent registered and uses the domain name in dispute to attract internet users to third party links competing with Complainant’s services amounts to finding bad faith use and registration. See Geico, supra.

Finally, the Complainant contends that Respondent intentionally registered the domain name in dispute for commercial gain and that Respondent’s illegal use of Complainant’s Trademarks to compete with Complainant’s business cannot be considered a bona fide use, which illegal use is part of a business plan pursuant to which it registers famous third party trademarks as domain names, capitalizing on its unlawful use until the rightful trademark owner takes action to reclaim its trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent is 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 name; and

(iii) The domain name has been registered and is being used in bad faith.

The Complainant has established very well through its important activities since 1918, the wide variety of insurance and financial services under its family of GUARDIAN Trademarks, in particular life and health insurance including dental insurance. Its acknowledgement as a major insurance company by Forbes magazine and major rating companies, its volume of business, the diversity and extent of its advertisements and promotional materials in particular for its Guardian Dental Insurance Services, demonstrate that the Complainant enjoys the benefits of a very important family of Trademarks in which the distinctive element is “guardian” associated with different descriptive terms as mentioned above and these Trademarks have considerable goodwill and fame associated therewith.

The fact that descriptive terms such as “dental plan” and the top level domain name “.org” are associated with the most distinctive element “guardian” does not avoid confusing similarity as it was held in Baccarat SA v. MSL Int’l, Inc. Case which finding this Panel adopts. Furthermore, the addition of “dental plan” to the Trademark does not assist in distinguishing the domain name in dispute from Complainant’s Trademark. On the contrary, these descriptive words actually enhance the likelihood of confusion as it also has been found in numerous panel decisions cited by the Complainant.

This Panel finds that the domain name in dispute is confusingly similar with the well-known and famous Trademark GUARDIAN.

The first criterion has been met.

B. Rights or Legitimate Interests

Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name <guardiandentalplan.org> and that the use of the domain name in dispute, is not legitimate non-commercial or fair. Furthermore, Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trademarks. There is no evidence that Respondent has ever engaged in any legitimate business under the Complainant’s Trademarks.

According to the evidence, the Respondent does not underwrite, offer, promote or sell dental insurance under any trademark but the Complainant’s, through the use of the domain name in dispute. The Respondent is not related to, licensed nor affiliated with the Complainant and the latter has never authorized or granted Respondent the right to use any of the Trademarks or to register the domain name in dispute.

Finally, the fact that the Respondent is using the domain name in dispute to provide a variety of links to third party website and searches relating to dental and health insurance services does not constitute a bona fide offering of goods or services pursuant to section 4(c)(i) or a legitimate non commercial or fair use under section 4(c)(iii) of the Policy.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It should be noted that the circumstances of bad faith are not limited to the above.

Upon considering the extent of use of the family of Trademarks including GUARDIAN by the Complainant, its association with dental insurance by the Complainant and the long standing fame of the Trademarks, this Panel finds that the adoption and registration of the domain name in dispute is intentional and cannot be a coincidence. As the Complainant contented, it is inconceivable that the Respondent did not know about the Complainant and its family of Trademarks. The Complainant has provided and cited the decision of panels in other UDRP cases which do find their application in the present circumstances and the Panel adopts the reasoning in the Sociйtй des Eaux de Volvic, Modefine, Dr. Ing. H.C.F. Porsche and Finaxa decisions in support of a finding by this Panel that the registration of the domain name in dispute was done in bad faith.

The intentional registration of the domain name in dispute, its use to compete with Complainant’s business amounts to bad faith use, not bona fide use. This bad faith use is further exemplified in the Respondent’s attempt to mislead Internet users in diverting them to its commercial website, as it has been found by other panels in the Geico, Maxrohr and F. Hoffmann Laroche UDRP decisions cited by the Complainant.

The Panel finds that the domain name in dispute was registered in bad faith and is being used in bad faith.

The third criterion has been met.

 

7. Decision

The Panel concludes that:

(a) the domain name <guardiandentalplan.org> is confusingly similar to the Complainant’s Trademarks; and

(b) the Respondent has no rights or legitimate interest in the domain name in dispute; and

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <guardiandentalplan.org> be transferred to the Complainant.

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J. Nelson Landry
Sole Panelist

Dated: June 20, 2006