DECISION

Liberty Mutual Insurance Company v. Chen Huang

Claim Number:  FA0405000269403

PARTIES

Complainant is Liberty Mutual Insurance Company (“Complainant”), represented by Christopher Sloan, 175 Berkeley Street, Boston, MA 02117.  Respondent is Chen Huang (“Respondent”), P.O. Box 20231, Zengdu, Guangzhou 34264, China 65487.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <libertymutualinsurence.com> and <libertyinsurence.com>, registered with Iholdings d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf, (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 10, 2004; the Forum received a hard copy of the Complaint on May 14, 2004.

On May 11, 2004, Iholdings d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <libertymutualinsurence.com> and <libertyinsurence.com> are registered with Iholdings d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings d/b/a Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 3, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@libertymutualinsurence.com and postmaster@libertyinsurence.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <libertymutualinsurence.com> and <libertyinsurence.com> domain names are confusingly similar to Complainant’s LIBERTY MUTUAL and LIBERTY marks.

2. Respondent does not have any rights or legitimate interests in the <libertymutualinsurence.com> and <libertyinsurence.com> domain names.

3. Respondent registered and used the <libertymutualinsurence.com> and <libertyinsurence.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a diversified worldwide insurance services organization founded in 1912.  Complainant is one of the largest insurers in the property and casualty fields and employs over 38,000 employees in over 900 offices worldwide.  Complainant is listed number 116 among the Fortune 500 companies.

Complainant has provided its services under the LIBERTY MUTUAL mark since as early as 1919.  Complainant owns numerous registrations for the LIBERTY MUTUAL mark worldwide including U.S. registration numbers 1,405,249 (issued Aug. 12, 1986) and 2,734,195 (issued July 8, 2003).  Complainant has also registered its mark in countries such as Argentina (Reg. No. 1674448 issued July 14, 1998), China (Reg. No. 1,990,169 issued Jan. 21, 2003), Mexico (Reg. No. 511,856 issued Nov. 30, 1995), and Switzerland (Reg. No. 514,954 issued Nov. 6, 2003), among other countries.

Complainant has also registered the LIBERTY mark in the insurance class in the following countries: Mexico (Reg. No. 519,610 issued Mar. 26, 1996), Venezuela (Reg. No. 5283N issued May 9, 1997), Argentina (Reg. No. 1,719,341 issued Feb. 5, 1999), China (Reg. No. 1965283 issued Nov. 21, 2002), and the United Kingdom (Reg. No. 1,282,966 issued Jan. 30, 1998).

Respondent registered the disputed domain names <libertymutualinsurence.com> and <libertyinsurence.com> on February 20, 2004.  The domain names <libertymutualinsurence.com> and <libertyinsurence.com> state on their attached websites, “Your source for the most popular LibertyMutualInsurence info!” and “Your source for the most popular LibertyInsurence info!”, respectively.  These attached websites provide hyperlinks to websites that offer insurance services.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the 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 of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the LIBERTY MUTUAL and LIBERTY marks under the Policy as a result of its numerous registrations of its marks with various worldwide governing authorities and long-standing use in commerce.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

The disputed domain name <libertymutualinsurence.com> contains Complainant’s LIBERTY MUTUAL mark in its entirety.  The domain name merely appends a common misspelling of the term “insurance” to Complainant’s mark, which describes the services Complainant offers under its LIBERTY MUTUAL mark.  The disputed domain name <libertyinsurence.com> contains Complainant’s LIBERTY mark in its entirety and merely appends the same mispelled word as in the case of the previous domain name.  Respondent’s addition of a misspelled version of a term that describes the types of goods or services offered by Complainant under its mark does not sufficiently differentiate Respondent’s domain names from Complainant’s marks under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms “traffic school,” “defensive driving,” and “driver improvement,” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to file a Response to the Complaint.  Therefore, Respondent may be considered to have implicitly admitted that it lacks rights to and legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Furthermore, there is nothing in the record that faintly indicates that Respondent is commonly known by the disputed domain names pursuant Policy ¶ 4(a)(i). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The fact that Respondent uses domain names that are confusingly similar to Complainant’s LIBERTY MUTUAL and LIBERTY marks and then links those domain names to businesses that offer competing insurance services does not evidence a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

As stated previously, Respondent has registered and used domain names that are confusingly similar to Complainant’s marks for the purpose of directing Internet users to businesses that offer competing services with those services offered by Complainant under its marks.  Such use establishes that Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

Likewise, such use establishes that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <libertymutualinsurence.com> and <libertyinsurence.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  June 28, 2004

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