Complainant is Arbella Mutual Insurance Company of Quincy, Massachusetts, United States of America, represented by the law firm Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States.
Respondent is Private, Registration, Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States/ David Haan of Las Vegas, Nevada, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On Friday, March 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2012, the following Monday, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information, discussed in Sections 4 and 6 below, 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 March 27, 2012 providing the registrant and contact information disclosed by the registrar, and inviting Complainant to submit an amendment to the Complaint or amended Complaint. Complainant filed an amended Complaint on March 27, 2012.
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 April 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2012. Respondent did not submit any response. Accordingly the Center notified Respondent’s default on April 23, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on April 26, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 is a mutual insurance company that sells insurance primarily in several of the New England states of the United States. Its principal trademark is ARBELLA, for which it holds many trademarks registered on the principal register of the United States Patent and Trademark Office (USPTO). The first of these, for various types of insurance, was registered in 1997. Complainant makes prominent use of its ARBELLA marks on the Internet, owning and using more than one hundred domain names with ARBELLA as the dominant feature.
The disputed domain name was initially registered in 2008, using a privacy service to do so; the registrant as shown in the WhoIs database annexed to the Complaint is Domains by Proxy LLC. The Registrar’s reply to the Center’s verification inquiry, however, indicated that the disputed domain name was registered to David Haan of Las Vegas, Nevada, United States, and that “The domain name was registered to this registrant [David Haan] on [March 24,] 2012.”
Until recently, according to the Wayback Machine at “”, no use was made of the disputed domain name. However in March 2012, before Haan’s registration, a website appeared captioned “Arbella Insurance/Cheap Arbella Auto Insurance Quotes.” Included on the website were a description of Complainant and its business, a link to Complainant’s website, and an interactive box through which an Internet user could submit his or her postal zip code to receive “up to 10 insurance quotes in just two minutes.” In the text on the website is a disclaimer: “While we are not affiliated with the Arbella Insurance Company or any other insurance company in any way […]” At the bottom of the same page appeared a copyright notice “© 2012 Arbella Insurance, Inc, all rights reserved.” 5. Parties’ Contentions A. Complainant
Complainant has rights in ARBELLA by virtue of its many USPTO-registered marks that feature that word and fifteen or more years’ use of it in commerce. The disputed domain name’s dominant feature is ARBELLA and it is thus confusingly similar to Complainant’s mark. Adding Complainant’s business “insurance” to the trademark only exacerbates confusion.
Respondent has never been known by any name that includes the word “arbella” and Complainant has not authorized Respondent to use the ARBELLA mark. The use to which Respondent has put the disputed domain name, particularly links to Complainant’s competitors, is not legitimate or bona fide for Policy purposes.
Respondent’s use of the disputed domain name is similarly evidence of bad faith, as an attempt to imply endorsement of or affiliation with Complainant, for Respondent’s commercial gain. Paragraph 4(b)(iv) of the Policy identifies such conduct as evidence of bad faith. As to registration, “there can be no question that Respondent knew of Complainant’s trademark rights before registering the disputed domain name.” Respondent’s non-use of the disputed domain name for several years is further evidence of bad faith.
The Panel notes that Complainant, though substituting David Haan as Respondent for the proxy service in the amended Complaint, proceeds on the assumption that one person or entity was the original registrant, hidden behind a privacy shield until the Registrar disclosed its identity. Complainant attributes both the earlier non-use and recent complained-of use to the same person or entity. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In this Policy proceeding Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
As in any default case, Respondent’s failure to reply to the Complaint does not constitute an admission of any factual matter pleaded in the Complaint or result automatically in a transfer of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6.
Paragraph 4(a) of the Policy prescribes five matters that Complainant must prove with competent evidence: rights in a mark; identity or confusing similarity of the disputed domain name with that mark; no rights or legitimate interests of Respondent in the disputed domain name; registration in bad faith; and use in bad faith. Complainant’s evidence overwhelmingly establishes four of these five elements. Here, the dominant feature of the disputed domain name is, to this Panel, identical to Complainant’s registered ARBELLA marks, and adding a word that describes Complainant’s business emphasizes rather than diminishes confusing similarity. Complainant has demonstrated and the record reveals to this Panel that Respondent has no rights or legitimate interests in the disputed domain name, and the evidence furnished by Complainant shows unmistakably that Respondent’s use of the disputed domain name falls clearly within the example of bad faith set out in paragraphs 4(b)(iv) of the Policy. As Complainant argues the Panel finds that Respondent’s disclaimer is of no effect given the clearly competitive use to which Respondent has put the disputed domain name.
That leaves the question of whether Respondent registered the disputed domain name in bad faith. It appears that the first registration occurred in 2008.1 Assuming as Complainant does that one person or entity has been the registrant since initial registration, Complainant presents no evidence of Respondent’s actual knowledge of the ARBELLA mark in 2008, relying instead upon its confident but unsupported assertion, quoted above, that Respondent must have known of it, and the doctrine of constructive notice applicable under the United States trademark law
Constructive notice, with rare exceptions, does not furnish a basis for inferring actual knowledge, WIPO Overview 2.0, paragraph 3.4, and actual knowledge of the mark at the time of registration is ordinarily required in a Policy proceeding. See, e.g., Kellwood Company v. Onesies Corporation,WIPO Case No. D2008-1172. Why “there can be no question that Respondent knew of Complainant’s trademark rights before registering the disputed domain name” is not clear from the record. In this Panel’s view, Complainant’s mark is not famous in the trademark sense. Complainant, its business, and thus its marks are admittedly regional, in the Northeastern United States, whereas Respondent (whether the privacy service or Haan) is located in the West over one thousand miles away.
Respondent’s imitative use four years after registration provides some basis for inferring knowledge in 2008, a fact bolstered by inclusion of the disclaimer that expressly identifies Complainant. Those two facts by themselves may not suffice for inferring actual knowledge several years earlier. The warehousing doctrine of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and the cases cited by Complainant, all involved either famous trademarks (e.g. TELSTRA) or improper use shortly after registration that betrayed actual knowledge at the time of registration. In this case, there is no evidence to show, and no allegation, that Respondent is a domain name aggregator, as to which special rules might apply. See WIPO Overview 2.0, paragraph 3.4, section entitled “Willful Blindness,” and cases there cited.
According to the Registrar’s reply to the Center, however, there may have been a new registration in March 2012.
As Haan’s registration date, March 24, 2012, was the day following the Center’s verification inquiry to the Registrar, it may be that Complainant is correct that Haan registered the disputed domain name in 2008, and that the Registrar merely disclosed its proxy’s principal upon receipt of the Center’s request for registrar verification of registrant details. This is a practice adopted by some registrars to address UDRP issues arising from proxy registration. See, for example, Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith,WIPO Case No. D2007-1033, Section 6. B.
However, it is also possible that, tipped off about the filing of the Complaint, which Complainant sent by email to the address shown in the WhoIs database contact information, a transfer took place in March 2012 at Haan’s request. If that be the case, March 24, 2012 is to be considered the date of Respondent’s registration and the date upon which registration in bad faith is to be evaluated. WIPO Overview 2.0, paragraph 3.7. That is ordinarily so even if the earlier registrant was affiliated with its immediate predecessor owner, see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J.,WIPO Case No. D2009-0785; BME, LLC.v. Gregory Ricks / Gee Whiz Domains Privacy Service,WIPO Case No. D2008-0882. Under this test Respondent’s immediate use of the disputed domain name as described above would certainly support an inference of bad faith in registration under a wealth of cases.
It appears far more likely to this Panel that the one-day difference between the Center’s request of registrar verification and stated registration to Respondent was not coincidence and that the Registrar’s policy or notice to the principal behind the proxy registrant resulted in the principal (and original registrant) being substituted for the proxy service. This Panel is thus not prepared automatically to deem the registration date for bad faith purposes to be March 24, 2012, the date disclosed by the Registrar, and even more loath to deem substitution of the principal for the proxy on the registry to be a new registration or renewal (see Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688) that re-starts the clock on measuring bad faith in registration. Such a bright-line rule might, inter alia, serve to discourage the registrars’ practice that the Panel has described above, a practice that in this Panel’s opinion facilitates resolution of UDRP disputes. Many registrars offer their own privacy services and might fear loss of business if their disclosure of the underlying registrant prejudiced their customers’ chances in a Policy proceeding. Such a rule might also harm many registrants that use a privacy service for entirely legitimate reasons such as discouraging spam or managing a domain name portfolio.
In this case the Panel need not choose between the probabilities of whether Haan was or was not the original registrant, for there is another argument, not advanced by Complainant but supported by its evidence, that persuades the Panel that, if Haan was the original registrant, he did register the disputed domain name in bad faith in 2008. ARBELLA is a coined term, “distinctive” in trademark parlance. It is not an everyday word, phrase, or letter combination that might have been registered for its “generic” value. Compare CVS Pharmacy, Inc. v. Top Investments, LLLP,WIPO Case No. D2011-0379 with Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011 . And even if ARBELLA alone might have been chosen for legitimate reasons, by incorporating the mark owner’s line of business into the disputed domain name – done in 2008 when the disputed domain name was registered – the Panel finds that Respondent almost certainly revealed that it did have actual knowledge of Complainant and its mark at that time. This line of inference, in this Panel’s view, tips the preponderance of the evidence in Complainant’s favor.
The Panel finds that bad faith in registration and use of the disputed domain name has been proven whether or not Haan was the original registrant. 7. Decision
For 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.
Richard G. Lyon
Sole Panelist
Dated: May 5, 2012
1 The passage of time, standing alone, has little bearing on the vitality of the Complaint. See WIPO Overview 2.0, paragraph 4.10 (“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP”); Royal National Lifeboat Institution v. Whois Service, Belize Domain Whois Service,WIPO Case No. D2009-1434 (“It is now almost universally accepted that the common law doctrines of laches or estoppel are not applicable in Policy proceedings.”)
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