WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jackson National Life Insurance Company v. Dan, Booker, Total Net Solutions / Moniker Privacy Services Case No. D2008-1505 1. The Parties
The Complainant is Jackson National Life Insurance Company, Michigan, United States of America, represented by Butzel Long, United States of America.
The Respondent is Dan, Booker, Total Net Solutions, Victoria, Australia / Moniker Privacy Services, JACKSONNATIONALIFEINSURANCECOMPANY.COM, Pompano Beach, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2008. On October 3, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 7, 2008, 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 October 8, 2008 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 amended Complaint on October 13, 2008. The Center verified that the amended 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 October 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2008.
The Center appointed Ian Blackshaw as the sole panelist in this matter on November 27, 2008. 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 Complaint is a United States based Company which offers life insurance, underwriting and financial investment services.
The Complainant is the owner of the following registered trademarks:
JACKSON NATIONAL LIFE INSURANCE COMPANY
U.S. Reg No. 2,338,319
IC 35: “Insurance marketing consulting services for agents and brokers”
IC 36: “Life insurance and underwriting services”
The Complainant also provides annuity underwriting and financial investment services under this mark.
JACKSON NATIONAL LIFE
U.S. Reg. No. 1,489,625
IC 35: “Insurance marketing consulting services for agents and brokers”
IC 36: “Life insurance and underwriting services”
The Complainant also provides annuity underwriting and financial investment services under this mark.
JACKSON NATIONAL
U.S. Reg. No. 1,489,626
IC 35: “Insurance marketing consulting services for agents and brokers”
IC 36: “Life insurance and underwriting services”
The Complainant also provides annuity underwriting and financial investment services under this mark.
JACKSON
U.S. App. Ser. No. 78/949,574
IC 35: “Insurance marketing consulting services for agents and brokers”
IC 36: “Life insurance and annuity underwriting services”
The Complainant also provides financial investment services under this mark.
The Complainant is the owner of the above-listed marks for insurance and investment related services (hereinafter referred to as “the Jackson National Life Marks”). Copies of the corresponding registrations have been provided.
The Complainant has used the Jackson National Life Marks in commerce with respect to the identified services since at least as early as April 13, 1961. Evidence of this has been provided.
The Complainant is not aware of any other entity, either in the United States or abroad, offering similar or related services under a company name, trade name, or service mark containing the phrase “Jackson National Life Insurance.”
No registered or pending mark containing the phrase “Jackson National Life Insurance” appears on the online database of the United States Patent & Trademark Office except those belonging to the Complainant.
The Complainant is not aware of any registration for any mark containing the phrase “Jackson National Life Insurance” on the registry of any other country. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions: A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant offers the services identified to the Jackson National Life Marks on the Internet via its website located at “”. Evidence of this has been provided to the Panel.
The Respondent's domain name contains the phrase “Jackson National Life Insurance Company”.
The website attached to the Respondent's domain name is a “links” site, which provides links to other entities selling life insurance underwriting services. Evidence of this has been provided to the Panel.
The Respondent presents its domain name at the top of its website home page in a prominent manner, constituting a trademark use of the Jackson National Life Marks. Again, evidence of this has been provided to the Panel.
Taken as a whole, the disputed domain name is confusingly similar to the Jackson National Life Marks as to sight, sound, and meaning. A2. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intends to misleadingly divert consumers for commercial gain.
By clicking on the various links on the Respondent's website, the user is directed to other life insurance company websites. Evidence of this has been provided to the Panel. Thus, the Respondent's website is commercial in nature.
By clicking on the links for “Jackson National Life CO,” “Mass Mutual Life Ins.,” “Affordable Term Insurance,” “Union Life Insurance,” and “Affordable Health Plans,” for example, the user is directed to pages of links for websites operated by other insurance companies. Again, evidence of this has been provided to the Panel. None of these other companies is the Complainant.
The Respondent's use of the disputed domain name is calculated to lead consumers, who may be trying to reach the Complainant, to the Respondent's website, where those consumers will be misdirected to the Complainant's competitors, in a manner that commercially benefits the Respondent. A3. The domain name was registered and is being used in bad faith;
Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))
As described in detail above, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's Jackson National Life Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them. 6. Discussion and Findings
To qualify for cancellation or transfer of the domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall 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 accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a domain name incorporates a complainant's registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates in its entirety the Complainant's well-known and well-established trademark JACKSON NATIONAL LIFE INSURANCE COMPANY, which is also the Complainant's corporate/business name.
The addition of the suffix”.com” to the disputed domain name does not affect the position for trademark distinguishing purposes, as its presence in the disputed domain name is for Internet registration purposes only. See Samsung Electronics Col. Ltd. v. Selim Civelek,WIPO Case No. DRO2008-0005 and the other UDRP cases cited therein.
In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical to the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and substantial goodwill through wide commercial use of the same prior to the registration of the disputed domain name by the Respondent. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed Domain Name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. Indeed, in view of the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY and its commercial use and the goodwill that it enjoys, the Respondent must in all likelihood have known that, when registering the disputed domain name, the Respondent could not have – or, indeed, claimed – any such rights or legitimate interests. Indeed, in these circumstances, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors),WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant and the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY when registering the disputed domain name. Apart from that, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977.
Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY Indeed, the adoption by the Respondent of a domain name identical to the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services (see further on this point below) and the consequential tarnishing of the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY and also the valuable goodwill that the Complainant has established in this trademark through commercial use over many years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site 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] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed domain name, is trading on the Complainant's valuable goodwill established in its well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY. In the particular circumstances of the present case, the Panel takes the view that it was unlikely that the registration of the disputed domain name by the Respondent was coincidental, but rather more likely to have been intentionally made with the Complainant's well-known trademark and the valuable goodwill it represents in the market place specifically in mind.
Again, by registering and using the disputed domain name incorporating the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649. Also, the inclusion of references to insurance services on the Respondent's website comprising the disputed domain name that compete with those offered by the Complainant constitutes bad faith.
Furthermore, the fact that the disputed domain name includes the well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY of the Complainant, registered by the Complainant far prior to the date the Respondent registered the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. For a domain name would typically be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.
Again, the so-called ‘click-through' presumed income or other benefit(s) that the Respondent is gaining on the back of the Complainant's well-known trademark JACKSON NATIONAL LIFE INSURANCE COMPANY from visitors to its website incorporating exactly and in its entirety the Complainant's well-known trademark and business name in the disputed domain name also, in the view of the Panel, constitutes bad faith. See
Mc Donald's Corporation v ZusCom,WIPO Case No. D2007-1353, in which the panel in that case stated: “Panels have held that the use of another's trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy…”
Finally, the failure of the Respondent to answer the Complainant's Complaint or take any part in the present proceedings is, again in the view of the Panel, a further indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name 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.
Ian Blackshaw
Sole Panelist
Dated: December 9, 2008
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