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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amica Mutual Insurance Company v. Contactprivacy.com/Merab Okruashvili, Amica Insurance

Case No. D2009-0406

1. The Parties

The Complainant is Amica Mutual Insurance Company of Lincoln, Rhode Island, United States of America, represented by Scott & Bush Ltd., United States of America.

The Respondent is Contactprivacy.com of Toronto, Ontario, Canada / Merab Okruashvili, Amica Insurance of Tbilisi, Georgia.

2. The Domain Name and Registrar

The disputed domain name <amica-insurance.net> (the "Domain Name") is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2009. On March 27, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 27, 2009, Tucows Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 3, 2009.

On April 8, 2009, the Respondent sent an email to the Center stating "Can you close the dispute? I`m ready to transfer the domain. Let me know."

On April 8, 2009 the Center sent an email to the Complainant`s legal representatives attaching the Respondent`s email dated April 8, 2009, and informing the Complainant of the possibility of and procedure for suspension of the proceedings in order to explore settlement between the parties.

No response from the Complainant or its legal representatives to the Center`s email of April 8, 2009 was received by the Center.

In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent`s default on April 24, 2009.

On April 24, 2009 the Respondent sent an email to the Center, this time stating "Can you initiate the domain transfer? I don`t know how to do it. I have received the authorization code for my hosting provider but have no idea how to do it. Here it is the code: [indicating the code]."

No further correspondence to or from either of the parties was provided to the Panel. In the circumstances, the Panel can only assume that there was no settlement of the proceedings, the Domain Name has not been transferred to the Complainant and the Respondent is still the registrant of the Domain Name.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 4, 2009. 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 is one of the leading provider of insurance products in the United States, and has been in the business of insurance for nearly 100 years. It runs a website "www.amica.com" through which it provides numerous services such as instant quotations for a number of insurance products.

The Complainant began using the word mark AMICA in or about February 1911 in connection with the marketing and sale of insurance services and products, and has been continuously been using the AMICA mark in commerce since then.

The Complainant owns a number of trade mark registrations in the United States dating back as early as 1938.

5. Parties` Contentions

A. Complainant

The Complainant`s primary contentions can be summarised as follows:

(a) The Respondent has no rights or legitimate interests in respect of the Domain Name, and nor is the Respondent using the Domain Name in connection with a bona fide offering of authentic goods or services.

(b) The Respondent`s use of the Complainant`s AMICA trade mark in the Domain Name is to attract potential customers to the website at the Domain Name (the "Respondent`s Website").

(c) The Respondent uses the AMICA mark in its website for commercial gain to divert potential customers to a website not affiliated with the Complainant or the Complainant`s products or services.

(d) The Respondent is not, and has never been commonly known by the Domain Name, and has no registered or common law trade marks or other rights in the AMICA mark.

(e) The Respondent`s registration and use of the Domain Name is to intentionally attract, for commercial gain, Internet users to the Respondent`s Website by creating a likelihood of confusion with the Complainant`s AMICA trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent`s Website and of the products and services of the Respondent`s Website and other website(s) not affiliated with the Complainant.

(f) The Respondent`s registration and use of the Domain Name is to intentionally disrupt the business of the Complainant by misdirecting Internet traffic away from the Complainant`s website.

(g) The Respondent registered the Domain Name to prevent the Complainant from reflecting its AMICA trade mark in a corresponding domain name.

(h) The Respondent`s representation to the Complainant in an email stating "Fortunately, I`m not located in the United States. So, there is no trade mark violation" is evidence of the registration and use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

Further, paragraph 14(b) of the Rules provides that where a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel may draw inferences from the Respondents` failure to submit a Response in accordance with paragraph 5(a) of the Rules as it considers appropriate.

A. Identical or Confusingly Similar

The Panel notes that the Complainant did not elaborate on its statement that the Domain Name is identical or confusingly similar to the Complainant`s AMICA trade mark.

Despite the thinness of the Complainant`s statement in regards to paragraph 4(a)(i) of the Policy, in the interests of justice the Panel is minded to reach its own conclusion on this matter based on the materials before it (as it is entitled to do under paragraph 15(a) of the Rules).

The Domain Name consists of the Complainant`s AMICA trade mark in combination with the generic term "insurance". The word "insurance" is related to the nature of the products and services that the Complainant provides under its AMICA trade mark. Accordingly, the term "insurance" does not detract from the distinctiveness of the Complainant`s AMICA trade mark in the Domain Name, but rather reinforces the confusing similarity of the Domain Name with the Complainant`s AMICA trade mark. See The Guardian Life Insurance Company of America v. Belize Domain WHOIS Service Lt, WIPO Case No. D2008-1087.

It is well-established that the addition of a generic term to a domain name consisting of a trade mark in case such as this rarely excludes a finding of confusing similarity under the Policy. See for example FINAXA Société Anonyme v. James Lee, WIPO Case No. D2002-1098 and Blue Cross and Blue Shield Association v. John Kraus, d/b/a MrINTER.NET, WIPO Case No. D2004-0756.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of this, the Respondent made the submissions set out at paragraphs (a) to (d) at 5A above.

It is well-established that the obligation is on the Complainant to make out a prima facie case in respect of this issue and that having done so, it is for the Respondent to demonstrate the contrary: See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 and Newman/Haas Racing v. Virtual Agents, Inc. ( WIPO Case No. D2000-1688).

As to how the Complainant may establish a prima facie case, it has been held that where the Domain Name is the Complainant`s well-known name and there is evidence the Complainant had not granted the Respondent a licence to use the Complainant`s name, this will suffice. See Newman/Haas Racing v. Virtual Agents, Inc., WIPO Case No. D2000-1688).

The Complainant in this case has stated that the Respondent is not commonly known by the Domain Name, has no trade mark rights therein, and has not used the Domain Name in connection with a bona fide offering of goods or services.

Further to the above, the Complainant has addressed the issues which, in accordance with the paragraph 4(c) of the Policy, are to be established by the Respondent in order to demonstrate the Respondent`s rights or legitimate interests to the Domain Name for purposes of paragraph 4(a)(ii). To this end, the Complainant has submitted that:

(a) there is no evidence of the Respondent`s use of the Domain Name in connection with a bona fide offering of authentic goods or services;

(b) the Respondent has "pirated" the goodwill associated with the Complainant`s AMICA trade mark by incorporating it in the Domain Name to attract users to the Respondent`s Website, and under the guise of receiving a quote and/or services offered by the Complainant, divert these users from to a website not affiliated with the Complainant or the Complainant`s products and services; and

(c) to the Complainant`s information and belief, the Respondent has never been commonly known by the Domain Name and has no registered or common law trade marks or other rights in the AMICA mark.

The Panel notes that the Respondent only needs to establish, inter alia, one of the following in order to demonstrate the he has rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy:

(i) the Respondent used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Domain Name; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant`s AMICA mark.

Strictly speaking it is for the Complainant to establish the prima facie case (as stated above) and the Respondent would then refute this by establishing (i), (ii) or (iii) above. In this case, the Complainant makes a few but credible assertions as to the Respondent`s lack of rights or legitimate interest in the Domain Name that stand unrebutted in light of the absence of any response from the Respondent.

Accordingly, it is open to the Panel to find that the Complainant`s assertions at (a), (b) and (c) above establishes a prima facie case in respect of paragraph 4(a)(ii) of the Policy. In this regard, the Panel refers to (c) where the Complainant states that to its information and belief, the Respondent has never been commonly known by the Domain Name and has no registered or common law trade marks or other rights in the AMICA mark. The Panel finds that this is a sufficient prima facie case for the purposes of showing that the Respondent has no rights and legitimate interests in the Complainant`s AMICA mark.

The Panel, in absence of any evidence submitted by the Respondent to prove any of (i) to (iii) above, infers that the Respondent does not dispute the Complainant`s assertion at (c) above.

There Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Bad Faith

The Panel refers to paragraphs (e) to (h) above at 5A which are the contentions the Complainant submits in support of its argument that the Respondent registered and used the Domain Name in bad faith.

The Complainant alleges that the Respondent registered the Domain Name to prevent the Complainant from reflecting its AMICA trade mark in a corresponding domain name. While this may be true, in order to rely on this to satisfy the requirement of paragraph 4(a)(iii) of the Policy, it is necessary to establish that the Respondent has engaged in a pattern of such conduct: see paragraph 4(b)(ii) of the Policy. The Complainant has not made any submissions nor adduced any evidence to this effect, and the Panel therefore finds that paragraph 4(b)(ii) of the Policy has not been satisfied.

Nonetheless, the Complainant may still establish bad faith if it can satisfy inter alia the requirements of paragraph 4(b)(i), (iii) or (iv) of the Policy.

The Complainant also alleges (as per paragraph 4(b)(iv) of the Policy) that the Respondent`s registration and use of the Domain Name was to intentionally attract, for commercial gain, Internet users to the Respondent`s Website by creating a likelihood of confusion with the Complainant`s AMICA trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent`s Website and of the products and services of the Respondent`s Website and other websites not affiliated with the Complainant.

It is evident that the Respondent, in registering the Domain Name, intended to benefit commercially from the goodwill attached to the Complainant`s AMICA mark. This is supported by the incorporation of the word "insurance", which describes the Complainant`s core services. It has been established that this is a strong inference that Respondent was well aware of the Complainant`s valuable AMICA mark and evidence that Respondent has registered and is using the disputed domain name in bad faith: See Asurion Corporation v. SQB, WIPO Case No. D2009-0165.

Furthermore, the links on the Respondent`s Website to websites promoting insurance products and services not affiliated with the Complainant shows that the Respondent intentionally attempted to attract users for commercial gain by creating a likelihood of confusion with the Complainant`s AMICA trade mark as to source, sponsorship and affiliation of the website: The Guardian Life Insurance Company of America, supra.

The Panel agrees with the Complainant that the Respondent`s registration and use of the Domain Name was to intentionally disrupt the business of the Complainant by misdirecting Internet traffic away from the Complainant`s website. This is apparent as the use of the Complainant`s AMICA mark combined with "insurance", the Complainant`s core services, was obviously intended to attract consumers seeking the Complainant`s official website "www.amica.com", or at least a website affiliated with the Complainant, to a website from which they could be diverted to other websites without any relation whatsoever to the Complainant. This is typical evidence of bad faith use of a domain name under paragraph 4(a)(iv) of the Policy: see FINAXA Société Anonyme, supra.

The Panel therefore finds that the Respondent has registered and used the Domain Name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

The Complainant also submits that the Respondent`s representation to the Complainant in an email stating "Fortunately, I`m not located in the United States. So, there is no trade mark violation" is evidence of the registration and use of the Domain Name in bad faith. In the circumstances, as it is clear that the Complainant has otherwise established the requirements of bad faith, it is unnecessary for the Panel to further consider this submission.

7. Decision

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 <amica-insurance.net> be transferred to the Complainant.

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Gabriela Kennedy
Sole Panelist

Dated: May 15, 2009