WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intersections, Inc. v. LSI Credit Services c/o Robert Boitano Case No. D2009-0433 1. The Parties
Complainant is Intersections, Inc. (“Complainant”) a corporation incorporated under the laws of the State of Delaware, with a principal place of business located in Chantilly, State of Virginia, United States of America.
Respondent is LSI Credit Services c/o Robert Boitano located in Pasadena, State of California, United States of America (“Respondents”). 2. The Domain Name and Registrar
The domain name at issue is (the “Domain Name”). The registrar is R, Inc. (the “Registrar”) located in New York, State of New York, United States of America. 3. Procedural History
On April 1, 2009, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant. On April 1, 2009, the Center also sent an Acknowledgment of Receipt of Complaint to Complainant.
On April 6, 2009 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in Respondent's name.
The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On April 8, 2009, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On April 30, 2009, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On May 5, 2009 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single member panel. 4. Factual Background
Complainant is in the business of offering its customers identity theft insurance, credit management, credit monitoring, identity theft protection, credit educations, fraud resolution assistance and credit card registration services. Complainant also offers credit card cancellation, personal data and password storage and protection, and computer software and downloadable computer software for identity theft and fraud protection. Complainant has rendered such services since 1999.
Complainant itself uses the domain name and maintains a website at “www.” at which customers can find out more about Complainant's services. Currently, Complainant services over 8 million customers and has spent over US D30 million in advertising on establishing its trademarks. The advertising includes use of the Internet through Complainant's own website, through banner ads, through adwords purchased from Yahoo! Inc and Google, through affiliate marketing, through third parties who in turn market to their consumers through online means and traditional marketing means such as direct mail, and also through telemarketing, radio and television advertisement. Additionally, Complainant's services are advertised through a variety of media available through Complainant's business clients, including in store collateral advertising displays, newsletters, direct mail, brochures and handouts.
Complainant contacted Respondent through counsel to see if Respondent was willing to sell the Domain Name. The response was a suggestion that US D10,000 was a reasonable amount. 5. Parties' Contentions A. Complainant's contentions
i. Complainant contends that it has registrations of the trademark IDENTITY GUARD (the “IDENTITY GUARD Mark”), that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the IDENTITY GUARD Mark. Complainant further alleges that at least one of its registrations is incontestable and conclusive evidence of its exclusive right to use the IDENTITY GUARD Mark in connection with the stated services. Complainant asserts that its rights in the IDENTITY GUARD Mark predated the registration of the Domain Name by Respondent on July 23, 2004.
ii. Complainant argues that the Domain Name is confusingly similar to the IDENTITY GUARD Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the IDENTITY GUARD Mark with the addition of the generic term “my” which Complainant alleges is grammatically and phonetically inferior and dominated by the principal component which in this case is IDENTITY GUARD.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) of the Policy because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) of the Policy because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the IDENTITY GUARD Mark in a domain name or in any other manner.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) of the Policy because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant further contends that Respondent has deliberately registered the Domain Name containing the IDENTITY GUARD Mark with actual and constructive knowledge of Complainant's trademark rights. Therefore, any use of this Domain Name cannot be legitimate.
iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii) of the Policy. Complainant states that the offer to sell the Domain Name for $10,000 was well above the cost of the Domain name to Respondent. Complainant asserts that Respondent has acted in bad faith pursuant to Paragraph 4(b)(i) of the Policy. B. Respondent's contentions
i.-iv. Respondent has chosen not to respond to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Because both Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772. Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and respondent would be subject to the inferences that flow naturally from the information provided by complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Limited and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and,
iii) that the Domain Name has been registered and is being used in bad faith. Enforceable Trademark Rights
Complainant contends that it has registrations covering the IDENTITY GUARD Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the IDENTITY GUARD Mark. Complainant further alleges that at least one of its registrations is incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated services. Complainant asserts that its rights in the IDENTITY GUARD Mark predated the registration of the Domain Name by Respondent on July 23, 2004.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has not contested the assertions by Complainant that it has valid registrations of the IDENTITY GUARD Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the IDENTITY GUARD Mark. Identity or Confusing Similarity
Complainant further contends that the Domain Name is confusingly similar to the IDENTITY GUARD Mark pursuant to the Policy paragraph 4(a)(i), because the Domain Name wholly incorporates with the IDENTITY GUARD Mark with the addition of the generic term “my” which Complainant alleges is grammatically and phonetically inferior and dominated by the principal component which in this case is IDENTITY GUARD.
Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the IDENTITY GUARD Mark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical). The addition of other non-distinctive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to complainant's registered trademark.
The Panel notes that the entirety of the IDENTITY GUARD Mark is included in the Domain Name and that the term “my” under these circumstances in non-distinctive. Furthermore, Respondent has chosen not to contest these assertions.
Therefore, the Panel finds that the Domain Name is confusingly similar to the IDENTITY GUARD Mark pursuant to the Policy, paragraph 4(a)(i). Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of Paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Respondent has no relationship with or permission from Complainant for the use of the IDENTITY GUARD Mark.
Complainant has sustained its burden of coming forward with allegations that Respondent lacks rights to or legitimate interests in the Domain Name, while Respondent has chosen not to contest Complainant's allegations.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii). Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).
The Policy, paragraph 4(b) sets forth four nonexclusive criteria for complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Policy, Paragraph 4(a)(iii). Complainant states that Respondent's offer to sell the Domain Name for $10,000 was well above the out-of pocket cost of the Domain Name to Respondent. Complainant asserts that Respondent has acted in bad faith pursuant to Policy, Paragraph 4(b)(i).
Respondent has chosen not to contest these allegations. Therefore, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy, paragraph 4(b)(i) and that the Domain Name was registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
The Panel concludes (a) that the Domain Name is confusingly similar to Complainant's registered IDENTITY GUARD Mark, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: May 21, 2009
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