WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jackson National Life Insurance Company v. Domains by Proxy, Inc./ Thanart Chamnanyantarakij Case No. D2010-0878 1. The Parties
Complainant is Jackson National Life Insurance Company of Lansing, Michigan, United States of America, represented by Butzel Long, United States of America.
Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / Thanart Chamnanyantarakij of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2010. On June 1, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 2, 2010, the Registrar 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 Complainant on June 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 9, 2010, substituting the individual Respondent Thanart Chamnanyantarakij in place of Domains by Proxy, Inc. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 1, 2010.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on July 14, 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 the Rules, paragraph 7. 4. Factual Background
Complainant owns various trademark registrations incorporating the term “Jackson National Life Insurance”, including the following: JACKSON NATIONAL LIFE INSURANCE COMPANY, United States Trademark Registration No. 2338319 with a first use in commerce date of April 13, 1961 and JACKSON NATIONAL LIFE INSURANCE, United States Trademark Registration No. 1489625 also with a first use in commerce date of April 13, 1961.
The disputed domain name was registered on June 14, 2009 and presently routes to an inactive web page.1 Shortly before the Complaint was filed, however, based upon exhibits to the Complaint, the disputed domain name routed to a page displaying sponsored links to several companies other than Complainant in the insurance services and products field. 5. Parties' Contentions A. Complainant
Complainant avers that for nearly fifty years it has used the above-listed trademarks in association with its business of offering annuity underwriting and financial investment services.
Complainant contends that the disputed domain name is confusingly similar to Complainant's marks as to sight, sound and meaning. Complainant summarily contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but instead uses it to misleadingly divert consumers through links on Respondent's website to third-party companies in the insurance sector, thereby intending to make commercial gain.
Finally, Complainant alleges that the disputed domain name was registered and is being used in bad faith, paraphrasing paragraph 4(b)(iv) of the Policy: “by using its domain name, Respondent has intentionally attempted to attract, for commercial gain, [I]nternet users to Respondent's web site, by creating a likelihood of confusion with the Complainant's Jackson Life Marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's web site.”
On the basis of these brief allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Rules require the Panel to decide a 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. Rules, paragraph 15(a). Complainant must establish each element 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 Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not respond to the Complaint. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel finds that Complainant's allegation that the disputed domain name is confusingly similar to Complainant's trademarks does not go far enough: the Panel finds instead that the disputed domain name is identical to one of Complainant's United States trademarks, as explained below.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
Without the “.net” gTLD suffix, the disputed domain name is identical to Complainant's JACKSON NATIONAL LIFE INSURANCE trademark.
The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.2
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
The website to which the disputed domain name routed until recently displayed links to commercial third-party websites. By diverting traffic to third parties and their products, the Panel finds that Respondent has been using Complainant's marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“the Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd., WIPO Case No. D2006-1079.
Although Complainant does not address this point, it does not appear on the record that Respondent is commonly known by the disputed domain name; the Panel also accepts Complainant's allegations that none of the links on Respondent's webpage direct users to Complainant. The Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant's marks for Respondent's own commercial purposes.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds that Complainant makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel also concludes that Respondent has registered and is using the disputed domain name in bad faith, as explained below.
Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well known, whether there is no response to the complaint, concealment of identity, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent knew of Complainant's mark when Respondent registered the disputed domain name, for the following reasons. It appears that Complainant's marks were registered and in use for decades before the registration of the disputed domain name. Therefore, “Respondent most likely was aware of Complainant's trademark when it registered the disputed domain name. It seems [highly] unlikely . . . that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A.,WIPO Case No. D2007-1236. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith.
It only remains to determine whether Respondent, in addition to registering in bad faith, is also using the disputed domain name in bad faith.3 The Panel concludes that Respondent is also using the domain name in bad faith, for the reasons explained below.
First, Respondent's website shows that the disputed domain name was used to promote the business of Complainants' competitors. This activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan,WIPO Case No. D2003-0031).
Second, it also appears that Respondent attempted to conceal its identity under circumstances suggesting bad faith.
The use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062. Without more, the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration. Id. In this case, however, it appears that Respondent has a bad faith motive for using a privacy registration service, to conceal its true identity and try to avoid responsibility. The Panel finds, therefore, that Respondent's use of a privacy service in this instance is further evidence of Respondent's bad faith. See, e.g., Canadian Tire Corp. Ltd v. CK Aspen, WIPO Case No. DTV2007-0015) (also citing other decisions finding use of privacy registration services as indications of bad faith).
Finally, Respondent's absence of a response to the Complaint provides further support for the Panel's finding of bad faith.
While the Complaint's allegations provide little detail, Respondent's choice of the disputed domain name containing Complainant's trademark and the content that has appeared on the website makes clear that “[R]espondent 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.” Policy, paragraph 4(b)(iv).
The Panel concludes that the requirements of the Policy paragraph 4(a)(iii) are fulfilled. 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 Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: July 28, 2010
1 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 Respondent Domains by Proxy, Inc. is a service provided by the registrar of the disputed domain name. Accordingly, the Panel's references in this decision to Respondent's conduct, intention and knowledge are meant to refer to the conduct, intention and knowledge of the individual named Respondent.
3 Both the elements of bad faith registration and bad faith use must be established. E.g., E. & J. Gallo Winery v. Hanna Law Firm,WIPO Case No. D2000-0615; Telstra Corporation Limited v. Nuclear Marshmallows, supra.
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