Complainant is Amica Mutual Insurance Company of Lincoln, Rhode Island, United States of America, represented by Scott & Bush Ltd., United States of America.
Respondent is Texas International Property Associates, URDMC LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 13, 2010, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On December 14, 2010, F 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on December 27, 2010.
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 December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2011.
The Center appointed Timothy D. Casey as the sole panelist in this matter on January 24, 2011. 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 began using the word mark AMICA in February 1911 in connection with the marketing and sale of insurance services and products. Complainant, in addition, owns the registration to three other AMICA trademarks, with the date of first use in commerce of these marks being 1911, September 1969, and January 2, 1998. Complainant services over 1.1 million insurance policies for customers throughout the United States. Finally, Complainant’s customer service has been ranked “Highest in Customer Satisfaction Among National Homeowners Insurers” by J.D. Power and Associates for the past four years in a row in its National Homeowners Insurance Studies.
Based on the evidence submitted, Respondent does not seem to own the registration to any trademarks. The disputed domain name was created on January 4, 2005. The disputed domain name resolves to a website that lists links to the websites of various insurance companies. Numerous domain name dispute complaints have been filed in the past against Respondent. In a number of these cases, Respondent changed the spelling of a trademark or added a word or an abbreviation of a word to a trademark owned by another party.
On or about January 27, 2011, the Center received a letter from an individual, Mr. Cox, notifying the Center of a pending United States District for the Northern District of Texas lawsuit styled Netsphere v. Ondova, Case Number 3:09-cv-0988 (the “Lawsuit”), that allegedly involved the “owner of the above-referenced domain name” along with a copy of a Receivership Order (the “Order”) and a Stay ordered by the arbitrator in an unrelated NAF administrative proceeding (the “Stay”). According to Mr. Cox, the Order of the court stays all other persons and entities aside from the Receiver “from taking any action to establish or enforce any claim, right, or interest for, against, on behalf of, it, or in the name of, the Receivership Party, any of their partnerships, assets, documents, or the Receiver or the Receiver’s duly authorized agents acting in their capacities as such, including, but not limited to, the following actions: 1. Commencing, prosecuting, continuing, entering, or enforcing any suit or proceeding, except that such actions may be filed to toll any applicable statute of limitations.”
On or about January 28, 2011, the Center received further correspondence from Mr. Cox providing a copy of an Order Granting the Receiver’s Motion to Clarify the Receiver Order in the above Lawsuit (the “Clarifying Order”).
On or about January 29, 2011, in response to the Center’s request that Mr. Cox identify himself and his relationship to the Parties, the Center received an email from Mr. Cox identifying himself as an attorney representing the “owners of the domains at issue” and including an attached copy of a Notice of Appearance in the Lawsuit by Mr. Cox, representing Quantec, LLC and Novo Point, LLC.
On or about January 31, 2011, the Center received an email from Complainant’s attorney, indicating that the current Registrant of the disputed domain name is “not listed, nor identified in, the documents Mr. Cox provided.” 5. Parties’ Contentions A. Complainant
As indicated above, Complainant has insured drivers of automobiles for nearly one hundred years. Complainant contends that it is the oldest mutual insurer of automobiles in the United States and currently services over 1.1 million insurance policies. Complainant has expended millions of dollars to advertise and promote the AMICA mark and its associated products and services. Complainant has developed considerable goodwill in its brand through promotion, advertising and quality of products and services. Complainant lastly contends that the AMICA marks are distinctive, have achieved fame, and embody substantial goodwill.
Complainant notified Respondent of its rights in the AMICA mark on October 12, 2010 and October 28, 2010, demanding that Respondent cease and desist from further use of the AMICA mark and transfer the disputed domain name to Complainant. Complainant contends that in both instances, the correspondences sent to Respondent were returned to the sender respectively as “address is incomplete/recipient no longer at address” and “forward time expired, return to sender.” Complainant lastly contends that four days after the filing of the original Complaint by Complainant, Respondent modified the domain name registration, by changing the registrant’s name and changing the registrar, in an effort to delay or derail these proceedings.
Complainant contends that the prominent component of the disputed domain name is the AMICA mark. Complainant contends that the addition of the letter string “ins” to the disputed domain name emphasizes the association between the AMICA mark and insurance products and services. Finally, Complainant contends that the website associated with the disputed domain name presents a list of links to various insurance websites that are direct competitors of Complainant.
Complainant contends that Respondent’s registration and use of the disputed domain name is for the purpose of attracting intentionally, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the AMICA mark. Respondent’s website contains the unauthorized use of the AMICA mark. Complainant further contends that Respondent pirates the goodwill associated with the AMICA mark in the disputed domain name to attract potential customers to its website, which presents potential customers which links to direct competitors of Complainant. Complainant lastly contends that Respondent is a recidivist typosquatter as evidenced by numerous domain name disputes filed against Respondent.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent is in default and did not reply to Complainant’s contentions. 6. Discussion and Findings
Before addressing the Panel’s findings under paragraph 4(a) of the Policy, the Panel will address the relevancy and/or effect of the Lawsuit. As correctly noted by Complainant’s counsel, the Lawsuit does not list Respondent, Texas International Property Associates, URDMC LLC, as a party to the Lawsuit nor does it provide any indication that any of the parties to the Lawsuit own or control Respondent. While Mr. Cox has stated that the disputed domain name is owned by the Receiver in the Lawsuit, there is no evidence in the document provided by Mr. Cox to support such a statement. For example, while the Stay does indicate that Texas International Property Associates is Respondent in an administrative proceeding before the NAF involving a different domain name than the disputed domain name, the Stay does not specify the pending federal litigation related to that administrative proceeding and provides no basis for connecting respondent in that administrative proceeding with the present administrative proceeding. Accordingly, the Panel finds the Lawsuit to be irrelevant to this administrative proceeding and that the Order is without effect.
In view of the default and the absence of any reply to the Complaint by Respondent, the discussion and findings will be based upon Complainant’s contentions and any reasonable position that can be attributable to Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before Complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
As noted above, Complainant owns four registered trademarks for the AMICA marks. Each of the AMICA marks was in use in commerce prior to the creation of the disputed domain name. The disputed domain name contains the entire AMICA mark, plus “ins”. The Panel agrees with Complainant that the use of the string “ins” reinforces the association that a consumer would make between the AMICA mark and the insurance services provided by Complainant, as a consumer would reasonably presume that the string “ins” is short for “insurance.” The Amica name is distinctive and has no meaning other than to function as the AMICA mark.
The Panel finds the disputed domain name to be confusingly similar to the AMICA mark and this element of the Policy to be met by Complainant. B. Rights or Legitimate Interests
Respondent does not allege it has any rights or legitimate interests in the disputed domain name or any parts thereof. As noted above, the disputed domain name fully incorporates the AMICA mark, and the addition of the string “ins” is of no merit, and in fact reinforces the association between the disputed domain name and the AMICA mark. Respondent has not been authorized by Complainant to utilize the AMICA mark in the disputed domain name or in Respondent’s website. In addition, Respondent is not personally identified with, or commonly known by, the term “Amica” in any fashion.
Respondent’s website appears to exist for the primary purpose of diverting legitimate consumers of Complainant to Respondent’s website, which presents the consumers with links to websites of direct competitors of Complainant, from which Respondent likely profits. Respondent’s use is clearly commercial and does not appear to constitute any form of fair use.
The Panel finds that Respondent does not have any rights or legitimate interest in the disputed domain name and this element of the Policy to be met by Complainant. C. Registered and Used in Bad Faith
Considering Complainant’s long commercial use of the AMICA mark, it is highly unlikely that Respondent was not aware of the AMICA mark at the time the disputed domain name was registered. As noted above, the AMICA mark has been in use since 1911, close to a century before the creation of the disputed domain name by Respondent. Even if it could be reasonably assumed that Respondent was not aware of the AMICA mark, the fact is that Respondent’s website includes a listing of popular insurance companies, and the creation of Respondent’s website would have reasonably led to the discovery by Respondent of the AMICA mark. Further, since Amica does not otherwise have any common meaning, it is hard to believe that Respondent just so happened to come up with the same name to associate with insurance services and products. Accordingly, Respondent’s use is clearly in bad faith, which is best exemplified by the fact that the disputed domain name contains the AMICA mark in its entirety, yet the prominent and central listing of insurance companies on the home page of Respondent’s website does not include a link to Complainant’s website, but does include Complainant’s direct competitors. Therefore, Respondent is clearly using the disputed domain name for the bad faith purpose of driving commercial business from Complainant to the websites of the direct competitors of Complainant.
The pattern of Respondent of registering domain names that are confusingly similar to trademarks owned by other parties, as evidenced by the domain name disputes previously filed against Respondent reinforces the view that Respondent registered the disputed domain name in bad faith.
The Panel notes Complainant’s contentions of cyberflight. For the purposes of these proceedings, the Panel finds that the currently named Respondent is the appropriate Respondent. In this Panel’s view the fact that Respondent modified the domain name registration, by changing the registrant’s name and changing the registrar, at the early stages of the proceedings, while noteworthy, is not, in this Panel’s view, outcome determinative.
The Panel finds that Respondent registered and used the disputed domain name in bad faith. This element of the Policy has been met by Complainant. 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 disputed domain name, be transferred to Complainant.
Timothy D. Casey
Sole Panelist
Dated: February 7, 2011
Full & Egal Universal Law Academy