WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Guardian Life Insurance Company of America v. Belize Domain WHOIS Service Lt
Case No. D2008-1087
1. The Parties
The Complainant is The Guardian Life Insurance Company of America, Square, New York, United States of America, represented by Winston & Strawn LLP, New York, United States of America.
The Respondent is Belize Domain WHOIS Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name 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 July 18, 2008. On July 18, 2008, 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 at issue. On July 18, 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. 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 July 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2008.
The Center appointed Dr. Stefan Abel as the sole panelist in this matter on August 19. 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 a large insurance company located in the United States of America. It has provided insurance and financial services under its company name The Guardian Life Insurance Company of America and under its trademarks GUARDIAN for many decades.
The Complainant owns many United States of America service mark registrations for the mark GUARDIAN for insurance, financial and real estate services, including the US trademark no. 1637818 registered on March 12, 1991 for insurance services, inter alia.
Further, the Complainant has established a significant presence on the Internet under its domain name under which the Complainant provides websites that are interactive, permitting its insurance policy holders to locate health care providers and providing further information services for its clients.
The Respondent registered the disputed domain name on February 3, 2006. The Respondent’s site at the disputed domain name contains a large number of links to numerous commercial websites, in particular links to websites providing information of or about other insurance companies than the Complainant’s.
The Respondent has been involved in more than 40 UDRP proceedings before WIPO and the National Arbitration Forum. All but one of these proceedings resulted in the Respondent’s domain names being transferred to the respective complainant.
5. Parties’ Contentions
A. Complainant
In summary, the Complainant’s contentions are as follows:
The disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s addition of the term “insurance” to the mark GUARDIAN is not sufficient to distinguish the Respondent’s domain name from the Complainant’s GUARDAIN marks nor does it reduce likelihood of confusion. Respondent’s registration and use of the disputed domain in association with the website, which provides links to insurance services is designed to cause confusion and to lead customers mistakenly into believing that the Respondent is authorized or sponsored by the Complainant or otherwise associated with the Complainant.
The Respondent has no right or legitimate interest in respect of the disputed domain name. The Complainant has never authorized or granted permission to the Respondent to use its GUARDIAN mark or to obtain a domain name incorporating its mark. Respondent is not related to, licensed by or affiliated with the Complainant. The Respondent appears to have acquired and is using the disputed domain name solely for commercial gain and not for any bona fide legitimate purpose. United States of America courts have repeatedly found that the term GUARDIAN, by reason of its long use and extensive advertising, has a high degree of distinctiveness and enjoys considerable renown. The Respondent could only have decided to register and use a domain name incorporating the GUARDIAN mark in order to profit from the traffic generated by the fame of the mark and not for any legitimate noncommercial purpose.
The Respondent has engaged in the pattern of conduct and been identified as a serial cyber squatter by numerous panels. The Respondent was in prior notice of the Complainant’s rights in the mark GUARDIAN when registering the disputed domain name. The Respondent acquired and has used the disputed domain name to attract Internet users to its website for purposes of advertising services similar and identical to the Complainant’s services. The Respondent therefore has registered the disputed domain name in bad faith and is using it in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides for transfer of the domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) (i) to (iii) of the Policy.
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights; and
(ii) the Respondent has not rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being use in bad faith.
Paragraph 4(b) of the Policy sets out these circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name at issue is confusingly similar to the Complainant’s trademarks. The disputed domain name consists of the Complainant’s GUARDIAN trademark in combination with the generic term “insurance”. The word “insurance” indicates typical services, namely insurance services that the Complainant provides under its GUARDIAN trademark. The term “insurance” added to the Complainant’s trademark in the domain name therefore does not only lack any distinctive character with regard to the Complainant’s trademark but reinforces the confusing similarity of the domain name to the Complainant’s GUARDIAN trademarks.
As a general rule, the addition of a generic term to a domain name consisting of a trademark rarely excludes finding of confusing similarity under the policy. This finding is consistent with a number of previous UDRP-Panel decisions (see e.g. Grupotelevisa, SA de CV Commercio Mas, SA de CV estrategia televise, SA de CV, Video Serpel, Ltd. v 9876543210 WIPO Case No. D2003-0735).
The Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
The evidence indicates that the Respondent is not licensed or otherwise authorized by the Complainant to use its registered trademark or to register the disputed domain name.
The term “Guardian insurance” or “Guardian” is not used as a designation for a person, company, services or products on the website of the disputed domain name. These terms are only used as a domain name for a site containing links to various other sites in the insurance business.
In addition, the Respondent has already been found in several other UDRP proceedings to have no right or legitimate interests in many other domain names and was found to have registered and used these domain names in bad faith.
By producing evidence of these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is often an impossible task for the complainant to prove a negative that is primarily within the knowledge of the respondent such as the lack of rights or legitimate interests in the domain name. Producing evidence that the Respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) if the Respondent failed to rebut the prima facie case. This finding is consisting with the consensus of previous panel decisions (see e g. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons.
The Panel finds that, by using the domain name for a set of links to commercial websites promoting insurance services the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s GUARDIAN trademark as to source, sponsorship and affiliation of the website. The domain name combines the Complainant’s GUARDIAN trademark and a distinctive part of its company name with the term which is descriptive of the Complainant’s business. Internet users are therefore likely to get the idea that the Respondent’s site of the disputed domain is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion would attract more customers to the site of the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant’s GUARDIAN trademark and company name in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademark is obvious considering that the domain name consists of the term “guardian”and a term being descriptive of the Complainant’s activities, considering that no rights or legitimate interests in using the disputed domain name are apparent and considering that the Complainant is a large company, having a significant presence on the Internet and considering that the Complainant registered its GUARDIAN trademark and has used its company name incorporating the term Guardian decades before the registration of the disputed domain name. These circumstances are sufficient to establish the bad faith element of the Policy. Moreover, the finding of bad faith is further supported by the fact that the Respondent has been found in numerous other UDRP proceedings to have registered and used domain names in bad faith.
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 be transferred to the Complainant.
Dr. Stefan Abel
Sole Panelist
Date: September 2, 2008
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