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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Insurance Neighborhood, LLC v. Etouchcash
Case No. D2007-0293
1. The Parties
The Complainant is Insurance Neighborhood, LLC, of Calabasas, California, United States of America, represented by Alan I. Cyrlin, United States of America.
The Respondent is Etouchcash, of Shanghai, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <insuranceneighborhood.org> is registered with
Direct Information PVT Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2007. On March 1, 2007, the Center transmitted by email to Direct Information PVT Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On March 2, 2007, Direct Information PVT Ltd d/b/a PublicDomainRegistry.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 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 March 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2007. On March 12, 2007, the Center received a brief email communication apparently from the Respondent. On March 13, 2007 the Center sent an email acknowledging receipt of the above email communication and indicating that if no further material was received from the Respondent by the specified due date of April 1, 2007, the Respondent’s email communication would be forwarded to the Panel on appointment in lieu of a Response. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on April 2, 2007.
The Center appointed The Honourable Neil Anthony Brown
QC as the sole panelist in this matter on April 11, 2007. 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
(a) The Complainant is an insurance company based in California.
(b) The Complainant is the owner of the trademark Registered Number 3,202,477, registered with the United States Patent and Trademark Office on January 23, 2007, for INSURANCE NEIGHBORHOOD.
(c) The Respondent registered the domain name <insuranceneighborhood.org>
on July 15, 2006.
5. Parties’ Contentions
The Complainant alleges that the domain name <insuranceneighborhood.org> should no longer be registered with the Respondent but that it should be transferred to the Complainant. It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical to the Complainant’s registered trademark INSURANCE NEIGHBORHOOD, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the INSURANCE NEIGHBORHOOD registered trademark to which reference has already been made and says that it is self-evident the domain name <insuranceneighborhood.org> is identical to the mark because they are exactly the same words.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name, because the facts show an obvious intention by the Respondent to trade on the Complainant’s mark and mislead consumers into believing that the domain name is an official domain name of the Complainant, that by using it to obtain access to a website they will arrive at the Complainant’s website and that the insurance and other products promoted on that website are the Complainant’s products or products endorsed by it. Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4(c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent’s conduct in putting the domain name up for sale brings it squarely within paragraph 4(b)(i) of the Policy and shows that it registered or acquired the domain name primarily for the purpose of selling it. The Complainant also contends that the Respondent’s conduct brings it within paragraph 4(b)(iv) of the Policy as it shows that the Respondent was intentionally attempting to attract Internet users to its website for commercial gain by creating the likelihood of confusion with the Complainant’s INSURANCE NEIGHBORHOOD mark or the products or services promoted on it.
The Respondent did not lodge a formal Response. However, after it was served with the Complaint, an individual, presumably the Respondent sent an email to the Center stating:
“dear sir, why complaint me I own it a long
time, nobody told something about it when I purchase it.”
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not lodged a Response and has not replied to the Complaint other than by the email referred to above, does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:
(i) The domain name 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.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant’s registered trademark INSURANCE NEIGHBORHOOD. That is so because, with one minor exception, both words are spelt the same and are pronounced the same and they are in substance the same word. The exception, of course, is the fact that the trademark consists of two words, whereas the domain name consists of one word. But that minor discrepancy does not distinguish the domain name from the trademark because the separation of the two words cannot appear in a domain name.
It is noted, however, that the domain name was registered on July 15, 2006, and that the trademark was not registered until January 23, 2007, although the application for registration of the trademark was made on August 7, 2003. This case therefore raises the question whether the Complainant may bring the Complaint at all, as it did not have a valid trademark when the domain name was registered.
The answer to that question is that it has now been well established that,
as the Policy only requires the Complainant to show that it ‘has’
rights in a trademark or service mark, the requirement is that the Complainant
‘has’ such rights at the time of filing the Complaint: see: Nгofumomais,
Clнnica de Homeopatia Antitabбgica, Lda. v. Re-Surgir - Consultores em Desenvolvimento
Individual e Organizacional, Lda., WIPO
Case No. D2004-0399: Valve Corporation v. ValveNET, Inc., ValveNET, Inc.,
Charles Morrin WIPO Case No. D2005-0038.
Clearly the Complainant in the present case has such rights, as it had them
by the time it filed its Complaint.
It has also been consistently held that identicality is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.
For all of these reasons the domain name is identical to the trademark and the Complainant has thus made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a Respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, a Complainant will have failed to discharge its onus and the Complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until April 1, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1
of the Overview
of WIPO Panel Views on Selected UDRP Questions, “…a complainant
is required to make out an initial prima facie case that the respondent
lacks rights or legitimate interests. Once such prima facie case is made,
respondent carries the burden of demonstrating rights or legitimate interests
in the domain name. If the respondent fails to do so, a complainant is deemed
to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not made any attempt to rebut this prima facie case other than by, presumably, the email referred to above and the submission contained in that email does not rebut that case.
The email is open to the interpretation that the Respondent either registered or bought the domain name, but in either case the fact that the Respondent was not told anything about the domain name when it registered or bought it does not rebut the Complainant’s prima facie case.
The Respondent acquired, without the Complainant’s authorization, a domain name consisting solely of the Complainant’s own name and trademark. It has apparently linked the domain name to a website containing sponsored links to businesses providing services in direct competition with the insurance services provided by the Complainant and also other goods and services for which the Complainant is not responsible and has done so in a way that gives the impression that they are services being promoted by the Complainant.
It has been held many times that, as it was put in Baudville, In. v. Henry
Chan, WIPO Case No. D2004-0059, “…no
rights or legitimate interest derive from this type of use of another’s
trademark”. Accordingly, the conduct of the Respondent calls for an explanation,
which the Respondent could have given but has not. In the absence of such an
explanation by the Respondent, the Panel draws the inference that “any
evidence of the Respondent would not have been in [its] favour”: Pharmacia
& Upjohn AB v. Dario H. Romero, WIPO
Case No. D2000-1273.
The Complainant has therefore established that the Respondent has no rights or legitimate interests in respect of the domain name, and has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain
name was registered in bad faith and that it is being used in bad faith: Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.”
The conduct of the Respondent in the present case may well bring it within several provisions of paragraphs 4(b) of the Policy. However, as the Panel finds that the case clearly comes within paragraph 4(b)(iv) of the Policy, it is not necessary to consider those other provisions.
As has already been noted, the domain name is being used to host a website that contains sponsored links to businesses providing services in direct competition with the insurance services provided by the Complainant as well as other non –insurance goods and services provided by businesses other than the Complainant.
This is made apparent by Annex 17 to the Complainant which is a screen shot of the home page of the website to which the disputed domain name resolves. That page shows several links all of which relate to insurance.
The Panel has also made its own examination of the website and has found that the website promotes a range of insurance services provided by businesses other than the Complainant and other goods and services not provided by the Complainant.
The Panel has also observed that a search of the word ‘insurance’ on the website brings up links to insurance providers, none of which is the Complainant. Indeed, a search of the Complainant’s actual name, Insurance Neighborhood LLC, produces links to insurance companies none of which is the Complainant.
Applying these facts to the provisions of paragraph 4(b)(iv) of the Policy, it is clear for the following reasons that they come within it.
First, the Respondent was undoubtedly attempting to attract Internet users
to its website by using the INSURANCE NEIGHBORHOOD trademark. Looking at the
website to which the domain name resolves, it is impossible for the Panel to
accept that this was being done for any reason other than commercial gain in
one form or another, for the website has an essentially commercial nature about
it: see Scania CV AB (Publ) v. Unaci, Inc.,WIPO
Case No. D2005-0585.
Secondly, by using the precise name and trademark of the Complainant, the Respondent created a likelihood of confusion with them because Internet users would naturally think the domain name would lead to an official Insurance Neighborhood website.
Thirdly, the confusion that was and is likely to be created is confusion about the affiliation of the various goods and services on the Respondent’s website and the others to which it is linked and as to whether or not they are the Complainant’s official Insurance Neighborhood goods and services or in some way associated with it. When consumers see the same goods and services that they expect to find on an Insurance Neighborhood site being promoted on the Respondent’s site, namely insurance products, they will naturally assume that those products are being promoted with the Insurance Neighborhood imprimatur, when in fact they are not. When they see other goods and services, they will naturally assume that they are also being sponsored or endorsed by the Complainant which they likewise are not.
Clearly, this is all a deliberate attempt to promote the notion in the minds of consumers that they have arrived at an Insurance Neighborhood website and hence it is a deliberate attempt to trade off the Complainant’s name and trademark.
The Panel finds that these circumstances create confusion with the Complainant’s trademarks as to the sponsorship, affiliation and endorsement of the Respondent’s site and the services on it and on the sites to which it is linked and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy and clearly constitute bad faith in the manner in which the Respondent is using the domain name.
They also constitute bad faith in the registration of the domain name, for,
to paraphrase the words used in Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003: “ …it
is not possible to conceive of a plausible circumstance in which the Respondent
could legitimately use the disputed domain name. It is also not possible to
conceive of a plausible situation in which the Respondent would have been unaware
of this fact at the time of registration. These findings, together with the
finding … that the Respondent has no rights or interests in the domain
name, lead the Administrative Panel to conclude that the disputed domain name
has been registered by the Respondent in bad faith”.
Those words are equally applicable to the present case, although the domain name was registered after the trademark. This case comes within the Telstra principle as, before the domain name was registered, the application for the trademark had been lodged, the Complainant’s own domain name, <insurance neighborhood.com>, had been registered and the Complainant was in business under its present name.
Those facts, together with the fact that the trademark is itself a unique combination of words, leads the panel to conclude that, as in the Telstra Case, the domain name was registered in bad faith as well as having been used in bad faith.
Accordingly, the Complainant has made out the third of the three elements that
it must establish.
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 name <insuranceneighborhood.org> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: April 19, 2007