WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bluffside Health Insurance Services Inc. v. DiGiulio Insurance Agency
Case No. D2006-1347
1. The Parties
Complainant is Bluffside Health Insurance Services Inc., of Kentfield, California, United States of America, represented by Green & Green Law Offices, United States of America.
Respondent is DiGiulio Insurance Agency, c/o Paul DiGiulio, of Newport Coast, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October�19,�2006. On October�20,�2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. Go Daddy Software transmitted by email to the Center its verification response. 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 Respondent of the Complaint, and the proceedings commenced on November�3,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November�23,�2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November�28,�2006.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on December�21,�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. The due date for the decision was subsequently extended by the Panel.
4. Factual Background
Complainant, Bluffside Health Insurance Services, Inc., operates a website at the URL ””. The site prominently displays the name “eCaliforniahealth Insurance Services.” Complainant’s domain name was registered on October�27,�1999. Complainant has registered the name Ecaliforniahealth Insurance Services as “DBA/AKA” in connection with its license to conduct the business of insurance as a life agent, License Number #0B06288, although the date of such registration is not shown on the exhibits provided in support of Complaint.
Respondent , DiGiulio Insurance Agency, c/o Paul Di Gulio operates a website under the disputed domain name which identifies Respondent as a business-to-consumer insurance agency that delivers Web-based insurance information to individuals, families and small businesses. Respondent’s website indicates that it holds California License Number #0590488 for its business. The disputed domain name was registered on April�9,�2002. It is not apparent how long Respondent has used the disputed domain name for a website. The current website offers quotes on various insurance products and prominently displays the name “eCaliforniaHealthI.” Respondent is clearly identified as the operator of the site.
On February�15,�2006, nearly four years after the disputed domain name was registered, Complainant’s president wrote Mr. DiGiulio to object to Respondent’s use of the disputed domain name, stating “it has just come to my attention that your insurance agency is being promoted on the Internet by use of the URL .” Complainant claims that the response to this letter was an oral offer to sell the domain name, but provides no further details or support.
Complainant filed a separate civil action, Bluffside Health Insurance Services, Inc. v. Paul DiGiulio, DiGiulio Insurance Agency and Does 1-15, Marin Superior Court No. CV 062591, seeking “injunctive relief, damages and restitution for unfair competition, cybersquatting, common law trademark infringement and unfair competition, statutory trademark infringement and unfair competition, dilution of mark, dishonest and fraudulent trade practices and violation of statute.” Complainant indicates that the civil action is being transferred from Marin County to Orange County, California, “near the Defendant’s place of business.”
5. Parties’ Contentions
A. Complainant
Complainant contends that it has trademark rights in the names ECALIFORNIAHEALTH and ECALIFORNIAHEALTH INSURANCE SERVICES, and that the disputed domain name is identical or confusingly similar to those marks.
Complainant contends that Respondent has no right or legitimate interest in the disputed domain name because its registered name is “DiGiulio Insurance Agency” and that Respondent could not legitimately use “eCaliforniaHealthI” under the California Insurance Code, Section 1724.5.
Finally, Complainant contends the disputed domain name has been registered and used in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel will first consider two procedural issues: (1) the effect of Respondent’s default; and (2) the effect of the concurrent civil action between the parties.
Paragraph 14 of the Policy addresses Default, and states:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
Panel decisions reflect a consensus that the respondent’s default does not automatically result in a decision in favor of the complainant. Rather, the complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires Complainant to support its assertions with actual evidence in order to succeed in the proceeding. Accordingly, this Panel will consider the merits of the claim based on the record presented.
Paragraph 18 of the Policy address the effect of court proceedings, and states:
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider.
The ultimate effect of concurrent court proceedings on Panel decisions under this paragraph has been mixed. The Panel clearly has discretion to proceed with its decision despite pending civil proceedings. See e.g., AB SKF v. Pagaria, WIPO Case No. D2001-0867 (deciding to exercise discretion to proceed to a decision). In other cases, the Panel has exercised its discretion to terminate the proceeding due to a pending court action. For example, in Knipping Kozijnen B.V. v. R.T.P. Hanssen, WIPO Case No. D2006-0622, the Panel terminated the proceeding stating:
“The Panel finds that the dispute concerning the Domain Names is part of and ancillary to ongoing conflicts about the broader subjects of trademark ownership and infringement, non-usus and registration in bad faith, between several parties not limited to the Complainant and the Respondent. Therefore the Panel finds that the dispute concerning the Domain Names is outside the scope of proceedings under the Policy. Consequently, with reference to the discretion provided for in paragraph 18(a) of the Rules, the Panel decides to terminate this administrative proceeding and shall not proceed to a decision.”
In the circumstances here, after consideration, the Panel has decided to exercise its discretion to proceed to decision. Under the Policy, Complainant has the burden of establishing three elements. As noted above, Complainant retains this burden even though Respondent has defaulted.
A. Identical or Confusingly Similar
With respect to the first element, Complainant must demonstrate that it has rights in a mark that is identical or confusingly similar to the disputed domain name. Here, Complainant has not shown ownership of any state or federal trademark registration. Therefore, it must establish that it has acquired rights through use under applicable common law principles. To establish such rights, Complainant must show that the claimed mark is in use and that it is or has become distinctive as a designation of source for Complainant’s services.
Complainant claims it meets its burden because it has used the names eCaliforniaHealth and eCaliforniaHealth Insurance Services since at least October�27,�1999. Further, it relies on Secton 2(f) of the Lanham Act to claim a presumption of acquired disctintiveness after five years of use.
The Panel finds that the names claimed by Complainant are merely descriptive of its services and therefore are not inherently distinctive as an indication of source. Descriptive terms can become protectable trademarks if they acquire distinctiveness. Normally, this requires evidence regarding the manner and extent of use. Complainant, however, has provided little support for its claim of rights other than the fact that it has used the name for over five years.
Since Complainant relies on the Lanham Act presumption, it is important to recognize that Section 2(f) requires more than merely five years of use. Section 2(f) states that Complainant must present “proof of substantially exclusive and continuous use thereof as a mark . . . in commerce for the five years before the date on which the claim of distinctiveness is made.”
Complainant claims and Respondent obviously does not dispute that Complainant has used its alleged marks since October�27,�1999, more than five years before the claim of distinctiveness is made. The case record, however, also indicates that Respondent has owned the disputed domain name since April�9,�2002. This calls into question whether Complainant can establish five years of “substantially exclusive and continuous use” as required under the statutory provision on which it relies. Even if it could, there is also question as to whether the record presented on the extent and manner of Complainant’s use is sufficient to establish acquired distinctiveness, since little has been provided to the Panel other than bald allegation that it “prominently displays [sic] the word ECALIFORNIAHEALTH INSURANCE SERVICES as a trademark in use in interstate commerce . . . at least as early as October 27, 1999. . . “ As noted above, even in cases of default, the Policy requires Complainant to support its assertions with actual evidence in order to succeed.
These questions notwithstanding, it is not necessary to reach a decision on this element of the claim given the remaining findings of the Panel below.
B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name by showing that Respondent has a different trade name and is not authorized by Complainant to use the disputed name.
Nevertheless, the Policy indicates that rights or legitimate interests in the domain name should be found when the respondent used the disputed domain name for a bona fide offering of goods or services before notice of any objection from Complainant.
Here, the record shows that Respondent registered and was using the disputed domain name in connection with the advertising and sale of insurance services before receiving any objection from Complainant. It appears that Respondent is engaged in the bona fide offering of insurance services. It apparently has obtained a license to operate in California as an insurance agency and operates a bona fide business in Southern California. Complainant indicates that Respondent is a competitor, although the two businesses are located at considerable distance from one another, Complainant being located north of San Francisco and Respondent being located south of Los Angeles.
The disputed name is an apt descriptive phrase for health insurance services offered to residents of California via the Internet. This is not an obvious instance of trading on another’s well-known, distinctive mark, which might preclude a conclusion that the offering of services under the domain name is bona fide. It is plausible that Respondent independently selected the disputed name given its descriptive character.
The record presented also indicates that the disputed domain name was registered in 2002 and was in use for bona fide insurance services offered by a bona fide insurance agency on a site bearing that name before Complainant made any objection. There is no indication that Respondent’s use was a sham. These facts support a finding that Respondent might have a legitimate interest in the disputed domain name. Therefore, the Panel concludes that Complainant has failed to meet its burden of proof.
The conclusion reached here is not intended to and does not address the question of whether or not Respondent’s use constitutes trademark infringement or unfair competition. Those are issues beyond the scope of Policy and should be left to resolution in the civil action.
C. Registered and Used in Bad Faith
Complainant contends that the domain name was registered and used in bad faith because (1) Respondent orally offered to “sell” the domain name after Complainant objected; (2) Respondent’s registration prevents Complainant from using the same domain name; (3) Respondent is a direct competitor using the domain name to disrupt Complainant’s business; and (4) Respondent is deliberately trying to attract Internet users to its site for commercial gain based on confusion with Complainant’s name.
Unfortunately, Complainant has failed on these points to support its allegations with actual evidence, and what is contained in the record undermines Complainant’s claim. For example, it is apparent from the record presented that Complainant’s earliest use of its alleged marks was October�27,�1999. Respondent registered the disputed domain name on April�9,�2002, less than three years after Complainant’s claimed first use its alleged marks. Complainant’s only basis for claiming rights in its marks, however, is the assertion that it used the marks in commerce for five years. Complainant’s argument reveals the weakness of its claim since the record shows that Respondent registered the domain name at a time when Complainant may not yet have established rights in its alleged mark. Certainly, Complainant has not presented adequate evidence here to indicate that it has acquired rights prior to Respondent’s registration of the disputed domain name. Further, the record contains nothing to indicate that Respondent knew about Complainant’s name when it registered its similar name. Indeed, Complainant’s evidence indicates it was not aware of Respondent until nearly a year ago – its 2006 letter states it only recently learned about the domain name - demonstrating that it is equally plausible that Respondent was not aware of Complainant when Respondent registered the domain name. The weight of the evidence presented here fails to establish that it is more likely than not that the disputed domain names were registered and used in bad faith. Accordingly, Complainant has failed to meet its burden of showing the disputed domain name was registered or used in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Mark V.B. Partridge
Sole Panelist
Dated: January 12, 2007
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