Generic Top Level Domain Name (gTLD) Decisions

Complainant is Pan-American Life Insurance Company, New Orleans, LA, USA ("Complainant") represented by John W. Behringer, of Fitzpatrick, Cella, Harper & Scinto. Respondent is Hampton New Media, New Orleans, LA, USA ("Respondent").

The domain names at issue are <panamericanlife.com> and <panamlife.com> registered with Network Solutions, Inc..

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 14, 2001; the Forum received a hard copy of the Complaint on March 15, 2001.

On March 16, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <panamericanlife.com> and <panamlife.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 March 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 2001 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@panamericanlife.com, postmaster@panamlife.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 April 12, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Carolyn Marks Johnson 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.

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

A. Complainant urges that:

Respondent’s <panamericanlife.com> and <panamlife.com> domain names are confusingly similar to Complainant’s registered trademarks.

Respondent has no rights or legitimate interests in the <panamericanlife.com> and <panamlife.com> domain names.

Respondent registered and used the <panamericanlife.com> and <panamlife.com> domain names in bad faith.

B. Respondent did not submit a Response.

Since 1911, Complainant has used its well-known PAN-AMERICAN LIFE name and registered mark in connection with the sale of life insurance and life insurance underwriting services. Complainant is currently licensed to conduct business in thirty-six (36) states and the District of Columbia, and remains the largest mutual life insurance company in the southern United States. Moreover, Complainant is one of the forty (40) largest mutual life insurance companies in the United States.

Complainant has obtained registrations in PAN-AMERICAN LIFE, and PAN AMERICAN LIFE (as a service mark) on the Principal Register of the United States Patent and Trademark Office as Registration Nos. 1,707,215 and 1,705,412 respectively. Complainant has been in continuous use of the PAN-AMERICAN LIFE mark since its registration on August 11, 1992 and its PAN AMERICAN LIFE service mark since its registration on August 4, 1992.

The public and the media commonly refer to Complainant as "Pan-Am Life" or "Pan Am Life." Specifically, Complainant’s headquarters, located in the same city as Respondent’s registration address, is commonly known as "the Pan-Am Life Center Building."

Respondent registered the <panamericanlife.com> domain name on January 12, 2000 and the <panamlife.com> domain name on February 5, 2000. Respondent has also registered such domain names as <theneworleanssaints.com>, <theneworleanssuperdome.com>, <thewindsorcourthotel.com>, and <lakesideshoppingcenter2-dom.com> reflecting places inherently local to Respondent’s geographic location.

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.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Complainant established its ownership of the PAN AMERICAN LIFE trademark and service mark. Respondent’s domain name <panamericanlife.com> is identical to Complainant’s registered PAN AMERICAN LIFE mark and is confusingly similar to Complainant’s registered PAN-AMERICAN LIFE mark. It is well recognized that the addition of the ".com" suffix to a domain name does not take the domain name out of the realm of being confusingly similar for purposes of the first factor of Policy 4(a)(i). See Snow Fun, Inc. v. James O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name TERMQUOTE.COM is identical to Complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) ".com" after the name POMELLATO is not relevant).

Furthermore, the Respondent’s deletion of a hyphen does not impact the analysis of whether the <panamericanlife.com> domain name is confusingly similar. See Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain name is not sufficient to differentiate the domain names from the mark); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’ s mark). Respondent’s registration of <panamericanlife.com>, at the very least, is confusingly similar to Complainant’s registered PAN-AMERICAN LIFE marks.

The <panamlife.com> domain name is a well-known abbreviation of Complainant’s registered mark. Moreover, the "Pan-Am" abbreviation is a widely recognized abbreviation for "Pan-American." See acronyms, initialisms & abbreviations dictionary 2757 (1996). The <panamlife.com> domain name is therefore confusingly similar to Complainant’s registered marks. See Arrowhead Capital Management v. Arrowhead Capital Management, LLC, FA 94920 (Nat. Arb. Forum July 12, 2000) (finding that "ARROWHEAD-CAPITAL" is indistinguishable from "ARROWHEADCAPITAL", and the abbreviation "cap." and the word "capital" have synonymous meanings for anyone involved in investing and financial management).

Complainant has also established that Complainant is commonly known by "Pan-Am Life," giving Complainant common law rights in this mark. Specifically, Complainant established that the public and media commonly refer to both Complainant’s company and its headquarters by the name "Pan-Am." The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). Therefore, Respondent’s registration of the <panamlife.com> domain name is, at minimum, confusingly similar to the Complainant’s use of "Pan-Am Life."

The Panel finds that Respondent registered domain names that are identical to and confusingly similar to Complainant’s well-know marks. Policy 4(a)(i).

Complainant established its rights to and legitimate interests in Complainant’s trade and service marks. Respondent failed to come forward to demonstrate any rights or legitimate interests in the <panamericanlife.com> or <panamlife.com> domain names that contain Complainant’s well-know marks. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because the Respondent never submitted a response nor provided the panel with evidence to suggest otherwise).

Respondent’s registration and passive holding of <panamericanlife.com> and <panamlife.com> does not evidence any use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Furthermore, Respondent is not commonly known by the domain names in dispute, as stated in Policy 4(c)(ii). See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Respondent also fails to establish that it is making a legitimate noncommercial or fair use of the domain name, as stated in Policy 4(c)(iii). See Chanel, Inc. v. Uraina Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where "Respondent registered the domain name and did nothing with it").

The Panel cannot find any rights or legitimate interests that Respondent may posses in the registration and use of the <panamericanlife.com> and <panamlife.com> domain names. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess); see also 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")

The Panel therefore finds that Complainant has rights to or interests in the marks contained in the domain names registered by Respondent and that Respondent does not. Policy (4)(a)(ii).

The proof in this case permits the strong inference that Respondent registered the domain names in issue that contain Complainant’s well-know marks, <panamericanlife.com> and <panamlife.com>, in order to prevent Complainant from reflecting the marks in a corresponding domain name. Respondent has exhibited a pattern of registering domain names that infringe on the rights of lawful trademark owners. Specifically, Respondent also has registered such domain names as: <theneworleanssaints.com>, <theneworleanssuperdome.com>, <thewindsorcourthotel.com>, and <lakesideshoppingcenter2-dom.com>. These domain names reflect places geographically local to Complainant and Respondent. See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith).

The fact that Respondent and Complainant are situated in close geographic proximity to one another further evidences that the domain names were registered in bad faith. See Gallerina v. Mark Wilmhurst, D2000-0730 (WIPO Aug. 16, 2000) (stating that "[a]s to bad faith registration, we cannot credit that when the name was registered… [Respondents were] unaware that in the same town there already existed an art gallery trading under the same name. We therefore find that the domain name was registered in bad faith").

The passive holding of the domain names in dispute, by Respondent, is further evidence of bad faith under Policy 4(b). See EMKA-Inc. v. E.K.M.A. Inc., FA 95133 (Nat. Arb. Forum Aug. 10, 2000) (stating that passive holding of a domain name is evidence of registration and use in bad faith).

The Panel therefore finds that Respondent registered and held the domain names <panamericanlife.com> and <panamlife.com> in bad faith. Policy 4(b)(ii).

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be and it is hereby granted.

Accordingly, it is Ordered that the <panamericanlife.com> and <panamlife.com> domain names be transferred from Respondent to Complainant.