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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation

Case No. D2009-0776

1. The Parties

The Complainant is Aspen Holdings Inc. of Omaha, Nebraska, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States.

The Respondent is Rick Natsch, Potrero Media Corporation of San Francisco, California, United States, represented by Nicholas A. Carlin, Esq., United States.

2. The Domain Name and Registrar

The disputed domain name <firstquote.org> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2009. On June 12, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 12, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 26, 2009. The Center verified that the Complaint together with the amendment to 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 July 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2009. The Response was filed with the Center on July 21, 2009.

The Center appointed William R. Towns as the sole panelist in this matter on August 6, 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.

On August 21, 2009, the Complainant submitted a "Request for Consideration of Supplemental Filing". On August 22, 2009, the Respondent submitted a similar request. As the Complainant`s request does not address new matters not foreseeable at the time of filing its Complaint, its request is denied. The Respondent`s request is thus moot. The Panel further notes that these submissions if accepted by the Panel would not alter the outcome of the instant decision.

4. Factual Background

The Complainant, doing business as FirstComp Insurance Company, provides products and services in the field of workers` compensation insurance. The Complainant holds a United States trademark registration for 1STQUOTE issued by the United States Patent and Trademark Office (USPTO) on October 2, 2007,<sup>1</sup> in connection with the provision of online non-downloadable work flow computer software for use in database management and administration of insurance information. The Complainant uses the mark in connection with a web-based quoting system, which is password protected, and available on the Complainant`s website to the Complainant`s network of independent insurance agencies. Through such agencies, the Complainant currently offers access to workers` compensation insurance in 31 states. According to the Complainant, it has used the mark in the United States since 1997.

The Respondent registered the disputed domain name <firstquote.org> on January 24, 008. The disputed domain name resolves to a portal search website (hereinafter referred to as "Firstquote.org website" or "Respondent`s website"), which contains search links for automobile insurance, life insurance, and business insurance. Internet visitors clicking on any of these links are redirected to other web pages that contain contextually relevant advertising links ("search results") as well as a further list of "related links". The "related links" include "workers` compensation insurance". Internet visitors clicking this link are directed to another page with links to third party commercial websites that advertise or offer workers` compensation insurance products or services that compete with those of the Complainant.

5. Parties` Contentions

A. Complainant

The Complainant maintains that the disputed domain name is identical and confusingly similar to the Complainant`s 1STQUOTE mark. According to the Complainant, by virtue of the quality of its products and services and as a result of considerable expenditures on advertising and promotional activity, the Complainant has built up valuable goodwill in the 1STQUOTE mark.

The Complainant asserts that it has an active presence on the Internet, and that the 1STQUOTE mark is prominently featured on every page of the Complainant`s website "www.firstcomp.com", from which the Complainant`s insurance agents can access the Complainant`s 1STQUOTE online application software. According to the Complainant, it has more than 7,500 independent insurance agents in 31 states, and has developed a strong customer base throughout its trading area, with more than 100,000 customers.

The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent registered and is using the disputed domain name to attract consumers looking for Complainant and its 1STQUOTE branded web-based application processing system to the Respondent`s website, which the Complainant describes as a "link farm" that provides links to third party websites that advertise and sell competing insurance and workers` compensation related products and services. According to the Complainant, competing websites at "www.statefarm.com", "www.netquote.com", and "www.djgins.com" offer workers` compensation insurance as well as other types of business insurance and personal insurance. The Complainant further maintains that it has not authorized the Respondent to use its 1STQUOTE mark, and that the Respondent is not commonly known by the disputed domain name.

The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract for financial gain Internet users to Respondent`s website, by misleading and confusing Internet users who are looking for the Complainant`s website. According to the Complainant, once at Respondent`s website consumers looking for the Complainant are faced with links to numerous third-party websites that advertise and sell workers` compensation products and services. The Complainant alleges on information and belief that the Respondent generates pay-per-click revenues when Internet users are directed to these third party websites.

The Complainant further asserts that the Respondent`s registration of the disputed domain name constitutes an act of "typosquatting", which in and of itself constitutes bad faith. Accordingly, the Complainant argues that it would be difficult for the Respondent to prove that it did not have actual knowledge of the Complainant. The Complainant asserts that the Respondent`s actual knowledge of the Complainant`s mark also can be inferred because the disputed domain name is the phonetic equivalent of the Complainant`s mark and because the Respondent`s website contains links to websites that advertise and sell competing products. The Complainant further contends that the Complainant`s prior United States trademark registration for 1STQUOTE confers on Respondent constructive notice of the Complainant`s rights in the mark, supporting a finding of bad faith.

B. Respondent

The Respondent describes itself as a leading performance-based marketing agency specializing in search marketing, lead generation and online publishing services since 2001. That is to say, the Respondent purchases domain names and builds websites to connect consumers with certain businesses on a pay-for-performance basis. According to the Respondent, it acquired the disputed domain name intending to build a website to service consumers in the health, life, auto and home insurance vertical segments, which it expects to launch on or about August 15, 2009, after some delays that the Respondent attributes to recent changes in the economic climate.

The Respondent disputes that the disputed domain name is either identical or confusingly similar to the Complainant`s 1STQUOTE mark. The Respondent notes that it is not in the workers` compensation insurance business, and that it does not use the disputed domain name for the computer software services for which the Complainant has registered the 1STQUOTE mark.

The Respondent further disputes the Complainant`s claim to be prominently featuring the mark on the Complainant`s website and marketing materials. According to the Respondent, a review of the Complainant`s website reflects that the Complainant does not feature the 1STQUOTE mark at all, except in connection with the legend "1^st Quote Login" used with a login portal on several pages on the site. The Respondent asserts that the Complainant did not register the corresponding domain name <1stquote.org> until April 7, 2009.

Further, the Respondent maintains that, according to the Complainant`s website, the 1^st Quote system is available only to "appointed" agents that have obtained from the Complainant the required username and password in order to log onto the system. According to the Respondent, the 1^st Quote system is not available at all to consumers – that is, the typical Internet users that the Respondent seeks to attract to its websites.

The Respondent points out that the Complainant offers no evidence of actual confusion. Further, the Respondent argues that there is no reasonable probability for any potential confusion, since no "consumer" other than one of the Complainant`s "appointed" insurance agents could possibly be misdirected to the Respondent`s website by mistyping the Complainant`s mark, and even then such agents would clearly know they had ended up somewhere other than the Complainant`s website.

The Respondent maintains that it has rights or legitimate interests in the disputed domain for the following reasons. The Respondent maintains that prior to any notice of this dispute it had undertaken demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, namely, a portal website to serve as a source of relevant information to consumers seeking personal life insurance. According to the Respondent "firstquote" is a generic term and a common phrase, which the Complainant has no monopoly over. Thus, the disputed domain name was freely available to be registered on a first-come, first-served basis.

The Respondent denies any responsibility for or control over the current content of the Firstquote.org website. According to the Respondent, the domain name registrar is responsible for such content, as well as the selection of the "http://chartlog.com" and "http://searchportal.information.com" websites to which Internet visitors are redirected when clicking the advertising links on the Respondent`s landing page. Accordingly, the Respondent denies any bad faith.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 with respect to the domain name; and

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

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <firstquote.org> is confusingly similar to the Complainant`s 1STQUOTE mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element is whether the mark and domain name, when directly compared, have confusing similarity. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The Panel finds that they do in this instance, and inasmuch as "firstquote" and "1stquote" might be said to be "alternate spellings" of the same phrase; the disputed domain name and the Complainant`s mark might also be said to be virtually identical in phonetic terms.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i).

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar, to the Complainant`s mark. The Complainant`s rights in the 1STQUOTE mark were established prior to the Respondent`s registration of the disputed domain name. It is undisputed that the Respondent has not been authorized to use the Complainant`s mark. Nevertheless, the disputed domain name has been used or permitted to be used by the Respondent with a pay-per-click website containing providing links to third party commercial websites, including websites on which workers` compensation insurance products and services that compete with the Complainant`s products and services are offered.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following non-exclusive factors:

(i) before any notice to it of the dispute, the respondent`s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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 trademark or service mark at issue.

The Respondent maintains that the disputed domain name merely incorporates the common descriptive term "firstquote", which the Respondent asserts is not exclusively associated with the Complainant, and that the Respondent`s proposed eventual use of the domain name in connection with a website serving as a source of relevant information to consumers seeking personal life insurance would constitute a bona fide offering of goods and services establishing a legitimate interest in the domain name under paragraph 4(c)(i). The Respondent argues that the Policy was not intended to permit a party who elects to register or use a common or descriptive term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230

A number of panels, including this one, have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive phrase, and not because of any value corresponding to a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

In this case, the Respondent has alleged that "firstquote" is a generic term or common phrase. While the words "first" and "quote" independently have generic meaning, the Respondent has provided no authority for the proposition that the term "first quote" is generic. Moreover, while "firstquote" arguably could be considered suggestive when used with a website providing quotes for insurance products or services, there is no evidence in the record establishing that the term "first quote" is a descriptive phrase commonly recognized or used by third parties in connection with insurance products and services.²

Regardless, to establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy, the Respondent could, inter alia show, prior to its receipt of notice of the dispute, the Respondent`s use or demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services. The Respondent asserts rights or legitimate interests based on what it claims to be demonstrable preparations to use the domain name with a website providing information about personal life insurance. However, more than eighteen months after acquiring the disputed domain name, the only purported evidence of such demonstrable preparations presented by the Respondent is a screen shot dated July 15, 2009 – a date subsequent to Respondent`s receipt of notice of this dispute and the formal commencement of this proceeding – of a landing page of a website that that has yet to be launched. Nothing about the nature of the webpage that suggests to this Panel that it was long in creation or that its creation date was other than July 15, 2009. Nor does it support the Respondent`s conclusory allegation of having expended considerable time, effort and resources in developing the domain name for such use. Moreover, the websites cited by the Respondent as evidence of his preparations would appear from the relevant WhoIs records to be registered by others; the Respondent has not presented any evidence as to his ownership.

What the record instead reflects is the use of a domain name that is confusingly similar if not identical to the Complainant`s mark for more than a year and a half to attract Internet users to the Respondent`s website for commercial gain, through advertising links to third party commercial websites, including websites offering workers` compensation insurance products and services that compete with those offered by the Complainant. The Respondent does not claim rights or legitimate interests in the disputed domain name based on such use, presumably because the Respondent disclaims any responsibility for this use. In any event, the Panel finds the Respondent`s protestations that it was helpless to control the content on its website unpersuasive. The Respondent ultimately is responsible for the content on its website. See, e.g., Grundfos A/S, supra; Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.

Further, the Respondent cannot establish rights or legitimate interests through the use of the disputed domain name with a pay-per-click landing page containing links to ads that relate to the Complainant`s area of commercial activity, thus manifesting an intent to exploit and profit from the Complainant`s mark. Such use does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See also Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093, BarcelГі CorporaciГіn Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com v. Ult. Search, Inc., WIPO Case No. D2001-1319. See also Champagne Lanson v. Development Services/MailPlanet.com, Inc., supra.³

In view of the foregoing, the Panel does not believe that the Respondent has met its burden of production under paragraph 4(c) of the Policy. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel notes that paragraph 2 of the Policy implicitly requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.⁴ See Media General Communications, Inc. v. Rarenames, WebReg, supra. The obligations imposed by paragraph 2 are an integral part of the Policy applicable to all registrants, cannot be ignored. City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643. In this case, the Respondent has not indicated whether it explored the possibility of third-party rights in any way before registering and using the disputed domain name. Nor is it clear to this Panel how the Respondent could have formed a good faith belief that the disputed domain name`s value derived from its generic or descriptive qualities when the Respondent has been unable to bring to the Panel`s attention any evidence that "firstquote" is a commonly recognized and used descriptive term in the field of insurance. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.⁵

Thus, while the Respondent claims it did not register the disputed domain name in order to profit from or exploit the Complainant`s mark, compelling facts and circumstances in the record suggest otherwise, and call into question the Respondent`s compliance with its representations and warranties under paragraph 2 of the Policy. See City Views Limited v. Moniker Privacy Services/Xander, Jeduyu, ALGEBRALIVE, supra. The Respondent registered a domain name confusingly similar to the Complainant`s mark, in which the Complainant had established prior rights. The Respondent`s website is populated with pay-per-click links that are related to the field of commercial activity of the Complainant, including links to websites offering insurance products and services that compete with those of the Complainant. The Respondent has brought to the Panel`s attention no reliable evidence that "firstquote" is a commonly recognized or used descriptive term in the field of insurance.<sup>6</sup> In the absence of such provided evidence, and noting also the Panel`s previous discussion under the second element, the Panel infers from such facts and circumstances an intent to exploit and profit from the Complainant`s trademark.⁷

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <firstquote.org> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: August 20, 2009