WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aspen Holdings, Inc. v. Isaac Goldstein Case No. D2010-0576 1. The Parties
The Complainant is Aspen Holdings, Inc. of Omaha, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Isaac Goldstein of Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2010. On April 15, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On April 15, 2010, Network Solutions, LLC 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” 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 11, 2010. The Response was filed with the Center on May 10, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on May 20, 2010. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant was established in 1997 and provides products and services in the field of workers' compensation insurance, including claims processing services and on-line insurance application processing services. It sells its products and services through a group of more than 7,500 independent insurance agencies located in 31 states and has more than 575 employees in four regional offices, serving nearly 100,000 business customers around the U.S. Since January 2003, the Complainant is using 1STQUOTE to promote its workers' compensation insurance products, including its on-line application processing software.
The Complainant is registered owner of the US trademark No. 3,302,240 1STQUOTE for “providing on-line non-downloadable work flow computer software for use in database management and administration in the field of insurance information”, registered on October 2, 2007 and claiming first use of January 1, 2003, and US trademark registration No. 3,739,776 1STQUOTE for “insurance underwriting in the field of worker's compensation insurance; insurance premium rate computing; providing information regarding workers' compensation insurance policy rates” and “application service provider (ASP) featuring software for use via the internet in supporting insurance policy sales, insurance underwriting, insurance policy issuance, insurance premium rate computing, insurance policy administration, namely, providing loss runs and accessing insurance policy numbers for issued accounts.”, registered on January 10, 2010 and claiming first use of January 1, 2005 (the “1STQUOTE-Marks”).
The Respondent acquired the disputed domain name on February 24, 2010 from an aftermarket service for the amount of USD 4,074 and is using it in connection with a parking website providing inter alia links to websites of the Complainant's direct competitors. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is confusingly similar to the 1STQUOTE-Marks as the only difference between the 1STQUOTE-Marks and the disputed domain name is that “1ST” in the Complainant's registered marks is spelled out as “first” in the disputed domain name and the addition of the Top-Level-Domain “.com”, which is non-distinctive.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as the disputed domain name does not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent, as the Respondent did neither use the disputed domain name or a trademark corresponding to the domain name in connection with a bona fide offering of goods or services nor made a legitimate non-commercial or fair use of the disputed domain name, and as the Complainant never authorized, licensed or otherwise permitted the Respondent to use its 1STQUOTE-Marks or any confusingly similar variation or equivalent thereof, for any reason, including, as part of a domain name.
(3) The disputed domain name was registered and has been used in bad faith. With regard to bad faith registration, the Complainant states that the Complainant's United States trademark registrations confer on the Respondent constructive notice of the Complainant's rights in its 1STQUOTE-Marks, which supports a finding of bad faith. Furthermore, the Complainant contends that the Respondent registered and subsequently began using the disputed domain name in bad faith primarily to intentionally attract for financial gain Internet users to the Respondent's website by misleading and confusing Internet users who are searching for the Complainant's website but misspell or mistype the brand name of the Complainant's 1STQUOTE on-line application processing service. The Complainant finally contends that based on the facts that the disputed domain name links to websites that advertise and sell competing products and that the Respondent's domain name contains the phonetic equivalent of the Complainant's 1STQUOTE-Marks, it can be inferred that the Respondent had actual knowledge of the Complainant's rights in the 1STQUOTE-Marks when it registered the disputed domain name. B. Respondent
The Respondent denies the Complainant's contentions.
The Respondent alleges that the phrase “First Quote” is the featured tagline for thousands of insurance, financial and legal websites and can be heard in numerous ads from agencies asking to “come in today for your first quote”. Upon the Respondent's allegations, the disputed domain name is comprised of a generic term, which may be used in hundreds of ways, and the Complainant is attempting to leverage the domain name from its owner by using the UDRP forum to reverse hijack the domain.
The Respondent further states that there are 10 active trademarks for FIRST QUOTE in the US, that there is no proof that the Complainant is the sole owner of and creator of the phrase “first quote” and that the disputed domain name was first registered on January 15, 1997, 6 years prior to the Complainant's claim of “first use” of the 1STQUOTE-trademarks and even before the Complainant was established, which also shows that the phrase had already been popular before complainant tried to claim it.
The Respondent further argues that he never intended to act in bad faith.
Furthermore, according to the Respondent's allegations, the Complainant has no website, brand, domain name, or anything else associated with “first quote” (rather than 1STQUOTE), and the Complainant does not even own the domain name .
The Respondent finally requests that the Complainant should be fined for Reverse Domain Hijacking. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the complainant's trademark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's 1STQUOTE-Marks.
In the view of Panel, the spelling of the Complainant's trademark 1STQUOTE in the disputed domain name as “firstquote” does not hinder a finding of confusing similarity as both words are phonetically identical and therefore confusingly similar under the Policy (cf. Aspen Holdings Inc. v. Christian P. Vandendorpe,WIPO Case No. D2009-1160 - ; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776 - ; Cellular One Group v. Digital Communications, Inc.,WIPO Case No. D2001-0189 - ; CPP, Inc. v. Virtual Sky,WIPO Case No. D2006-0201 - ).
Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's 1STQUOTE-Marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the 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) 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; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent claims that the term “first quote” is generic.
The Panel is aware that if a respondent is using a generic word to describe its product or business or to profit from the generic value of a word without intending to take advantage of a complainant's rights in that word, then it may in certain cases rely on a legitimate interest in the disputed domain name (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000-0016; Porto Chico Stores, Inc. v. Otavio Zambon,WIPO Case No. D2000-0270; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.,WIPO Case No. D2000-1005; Gorstew Limited v. W,WIPO Case No. D2002-0744).
On the one hand, the Respondent stated that the term “first quote” is generic and provided evidence that the term is used by third parties with regard in its generic sense. On the other hand, given that the term “first quote” has been registered as a trademark in connection with various goods and services and that it is not a dictionary term, it is not entirely clear whether the term “first quote” lacks all distinctiveness and is to be regarded as merely generic.
However, in the light of the Panel's finding under the head of “Bad Faith” (cf. 6.C. below), it is not necessary for the Panel to come to a decision in this regard. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 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 engaged in a pattern of such conduct; 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 its 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 its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).
With regard to the Respondent's bad faith registration and use, the Complainant contends that the Respondent registered the disputed domain name with actual or at least constructive notice of the Complainant's 1STQUOTE-Marks and was using the disputed domain name in bad faith primarily to intentionally attract for financial gain Internet users to the Respondent's website by misleading and confusing Internet users who are searching for the Complainant's website but, merely, misspell or mistype the brand name of the Complainant's 1STQUOTE on-line application processing service.
The Respondent has denied these assertions and provided evidence of substantial third parties' use of the term “first quote”, including the provision of services similar to those of the Complainant.
It seems to be more likely than not to this Panel that the Respondent acquired the disputed domain name - as he contends - because of its meaning and because of the substantial third party use of the underlying words, and not with a view to the Complainant and its 1STQUOTE-Marks. The Complainant's 1STQUOTE-Marks are not used identically in the disputed domain name but with a different spelling, and they enjoy less than average distinction, if any distinction at all, as they are made up of two generic words which are commonly used together. Moreover, the Respondent is based in Hong Kong, SAR of China, while protection of the Complainant's 1STQUOTE-Marks and the Complainant's business are limited to the United States of America. As a result, on the balance of evidence, the Complainant has failed in this Panel's assessment to prove that the disputed domain name was registered in bad faith, i.e. with the Complainant in mind.
In this Panel's assessment, the present case needs to be distinguished from previous - though not binding - cases decided under the UDRP, such as Aspen Holdings Inc. v. Christian P. Vandendorpe,WIPO Case No. D2009-1160, , and Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776, .
Aspen Holdings Inc. v. Christian P. Vandendorpe,WIPO Case No. D2009-1160, , dealt with an identical second level domain name and the same Complainant, and resulted in the transfer of the domain name . With regard to the decisive question whether or not was registered and had been used in bad faith, it was found in that case that, while the word “quote” was frequently used in connection with financial products, the phrase “first quote” called for some explanation. As was registered only 5 days after the Complainant had first started using the term 1STQUOTE in commerce, as the respondent in such case had been involved in an earlier UDRP proceeding, and as he had not replied to the Complainant's contentions, the panel in that case decided that these “factors when combined together are sufficient to tip the scales in the Complainant's favour on the balance of probabilities.” In the absence of such factors in the present case, however, and in this Panel's assessment in weighing the Complainant's case against the Respondent's reply, the Panel does not find that the Complainant has succeeded here in proving it is more likely than not that the disputed domain name was registered in bad faith.
Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776, , also dealt with an identical second level domain name and the same Complainant, and resulted in the transfer of the domain name. From the point of view of this Panel, however, the present Respondent (other than the respondent in such case) gave well-founded reasons why he was unaware of any known corporations operating under the brand name “first quote” when acquiring the disputed domain name, and, moreover, brought evidence to the Panel's attention that numerous insurance companies are advertising under the term “first quote”.
To sum up, other than in the above-cited cases, compelling facts and circumstances on the record of this case do not suggest that the disputed domain name was registered in bad faith. Accordingly, the transfer of the disputed domain name is denied. D. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the present case, where the Complainant owns trade mark rights confusingly similar to the second level of the disputed domain name, the Panel finds there is no room for a reverse domain name hijacking order. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Dated: June 3, 2010
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