WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aspen Holdings, Inc. v. Whois Privacy inc Case No. D2009-0714 1. The Parties
The Complainant is Aspen Holdings of Omaha, Nebraska, United States of America, represented by Hinckley Allen & Snyder LLP of Boston, Massachusetts, United States.
The Respondent is Whois Privacy inc of Georgetown, Grand Cayman, Cayman Islands, Overseas Territory of Great Britain and Northern Ireland. 2. The Domain Name And Registrar
The Disputed Domain Name is registered with CSL Computer Service Langenbach GmbH d/b/a J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2009. On June 2, 2009, the Center sent an email to J, seeking registrar verification in connection with the disputed domain name. On June 4, 2009, J submitted an email to the Center giving its verification response, disclosing the registrant and contact information for the Disputed Domain Name.
The Center verified that 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 June 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on July 24, 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. 4. Factual Background
The Complainant uses the website to advertise, promote and sell its workers' compensation insurance products and services including its 1STQUOTE branded services. The Complainant provides products and services in the field of workers' compensation insurance including claims processing under the mark 1STQUOTE. The Complainant has used the 1STQUOTE brand to promote its workers' compensation insurance products including its online application processing software since January 2003. The Complainant's website places the 1STQUOTE trademark prominently on each page. The Disputed Domain Name was registered on January 24, 2005. The website to which the Disputed Domain Name resolves contains links to third party websites, including, but not limited to, links to the websites of the Complainant's competitors. 5. Parties' Contentions A. Complainant
The Complainant submits that it has common law rights in the trade mark, 1STQUOTE, through its continuous, substantial and exclusive use of that mark in connection with a wide range of workers compensation insurance products and services. The Complainant's 1STQUOTE web-based quoting system is used by more than 7,500 independent insurance agencies in 31 states and the mark is prominently featured on the Complainant's advertising materials on its website. The Complainant further submits that it has won several awards for excellence including the prestigious Ernst & Young Entrepreneur of the Year award in 2002.
The Complainant asserts that it has acquired common law trademark rights in the 1STQUOTE mark through continued and extensive use of the mark in connection with worker's compensation insurance products. The Complainant and its predecessor in title have used the trade mark 1STQUOTE since 2003. The Complainant thereby claims that it has exclusive rights to use its 1STQUOTE mark in connection with worker's compensation insurance products.
The Complainant registered the 1STQUOTE trade mark (Registration No. 3,302,240) in the U.S. in 2007 for “Providing on-line non-downloadable work flow computer software for use in database management and administration in the field of insurance information”.
The Complainant contends that the only difference between the Complainant's mark 1STQUOTE and the Disputed Domain Name is the insertion of “www” before the Complainants mark and the addition of the gTLD designation “.com”. The Complainant submits that the Respondent is engaging in typosquatting solely for the purpose of exploiting the typographical errors which arise when Internet users are seeking the Complainant's website. The Complainant pointed to previous Panel decisions in support of the contention that such activities are not permitted under the Policy. See Trustmark National Bank v. Henry Tsung,WIPO Case No. D2004-0274 (June 4, 2004) (finding that the Respondent's registration of was confusingly similar to the Complainant's TRUST BANK mark.)
The Complainant submits that the Respondent has no rights or legitimate interest in 1STQUOTE or in the Disputed Domain Name as the Respondent did not use that domain name or a trade mark for 1STQUOTE or anything similar in connection with a bona fide offering of goods or services. The Respondent is not currently known by the Disputed Domain Name nor has the Respondent made a legitimate noncommercial use or fair use of the Disputed Domain Name. The complainant alleges that the Respondent is solely using the Disputed Domain Name to automatically and instantaneously direct Internet users to its website.
The Complainant submits that the Respondent registered and is using the Disputed Domain Name in bad faith to attract internet user's who mistakenly mistype the Complainant's website address. The Complainant asserts that the Respondent does this with a view to redirecting consumers to numerous third-party websites that advertise and sell competing products. B. Respondent
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw inferences it deems appropriate from the Respondent's default where necessary. 6. Discussion And Findings
If the Complainant is to succeed, he must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that;
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
There are two elements that must be satisfied under paragraph 4(a)(i) of the Policy. The first is that the Complainant must establish that it has rights in a trade mark. Secondly the Complainant must show that the Disputed Domain Name is identical or confusingly similar to that mark.
The Complainant registered the 1STQUOTE trademark in the United States in 2007 and first used the trade mark in January 2003. The Complainant has provided substantial evidence of use of the 1STQUOTE trade mark since January 2003. Therefore, the Complainant has provided satisfactory evidence that it has established trade mark rights in the ISTQUOTE mark.
The Disputed Domain Name is made up of the Complainant's trade mark with the addition of the letters “www” placed before it but with no fullstop following these letters. This does not serve to distinguish it substantially from the Complainant's trade mark. See previous decisions such as Trustmark National Bank, supra.
The Panel, therefore, finds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
A Complainant is required to make out at least an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such a prima facie case is made, the Respondent carries the burden of producing evidence establishing that it has rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to the respondent of the dispute, use by the respondent 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) Where the respondent as an individual, business, or other organization, has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) Where the respondent is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is generally regarded as prima facie evidence if: (a) a complainant shows that a disputed domain name is identical or confusingly similar to the complainant's trade mark; (b) that the respondent is not commonly known by such disputed domain name; and (c) that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark). Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
The Panel has already found that the Disputed Domain Name is confusingly similar to the Complainant's trade mark. There is no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name, is making a legitimate noncommercial use of the Disputed Domain Name, or has been authorized by the Complainant to use the 1STQUOTE trade mark. The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent has failed to file a Response to the Complainant. The Panel must, therefore, determine whether the Respondent has rights or legitimate interests in the Disputed Domain Name in terms of the evidence submitted by the Complainant.
The Disputed Domain Name is being used by the Respondent as a portal for links to other websites that sell competing products and services to those provided by the Complainant. The use of a domain name confusingly similar to a complainant's trademark as a portal to redirect Internet users to websites which compete with the complainant's business is not a legitimate use where this is done for commercial gain. See e-Duction Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies,WIPO Case No. D2000-1369. In the present circumstances the Panel finds the Respondent has provided no explanation for its use of the Complainant's trade mark and, based on its lack of a bona fide business and use of a website which has links for competing goods or services and also the Complainant's pre-existing use of the 1STQUOTE trade mark, the Panel considers that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. As such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use in bad faith. Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 respondent's website or location.
The Complainant contends that under paragraph 4(b)(iv) of the Policy the Respondent has used the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement.
The Complainant has had common law trade mark rights in 1STQUOTE since 2003 and registered trade mark rights since 2007. The Complainant has used the trade mark in connection with workers compensation insurance products and services during this time and has provided evidence of the degree of reknown of its mark in the United States.
The Respondent registered the Disputed Domain Name in 2005, well after the Complainant commenced using its mark and subsequently used the Disputed Domain Name to resolve to a page which provides links to websites of other and competing providers of workers compensation insurance presumably on a pay-per-click fee basis. There is no evidence to suggest that the Respondent operates a bona fide business under the Disputed Domain Name, nor does there appear to be any other satisfactory explanation for the Respondent's conduct.
The Panel also takes note of the Respondent's past pattern of behaviour in registering as domain names other reknowned trade marks with slight spelling differences, all of which resulted in transfer of the domain names to the trade mark owners. Although it may be that there is an underlying registrant in the case of privacy services, where a respondent does not come forward to clarify the same, the Panel may draw inferences as appropriate, here, that the same registrant is in fact behind the cited cases. March of Dimes Foundation v. Whois Privacy Inc.,WIPO Case No. D2007-1710; Baxter International Inc. v. Whois Privacy Inc.,WIPO Case No. D2007-1654; International Software Systems Solutions, Inc. v. Whois Privacy inc, NAF Claim No. 567689; and Red Dingo GmbH v. Whois Privacy Inc, NAF Claim No. 1106625.
In all the circumstances the Panel is prepared to infer that through the use of the Disputed Domain Name the Respondent was intentionally attempting to attract Internet users to its website featuring competing providers of workers compensation insurance by creating a likelihood of confusion with the Complainant's mark. This inference is only reinforced by the evidence of the Respondent's past similar conduct. See Royal Bank of Canada v. Henry Chan,WIPO Case No. D2003-0031; Expedia, Inc. v. Collarzo,WIPO Case No. D2003-0716 (holding that the respondent's use of a typo in the domain name to attract Complainant's customers for commercial gain was evidence of bad faith use.)
On this basis the Panel finds that the Respondent's activities fall within the circumstances outlined in paragraph 4(b)(iv) of the Policy and that Disputed Domain Name was registered and is being used 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.
Alistair Payne
Sole Panelist
Dated: August 10, 2009
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