national arbitration forum

DECISION

Hyatt Legal Plans, Inc. v. La Porte Holdings d/b/a Horoshiy

Claim Number:  FA0410000340736

PARTIES

Complainant is Hyatt Legal Plans, Inc. (“Complainant”) represented by Leon Medzhibovsky, of Fulbright & Jaworski, 666 Fifth Avenue, New York, NY 10103.  Respondent is La Porte Holdings d/b/a Horoshiy, 2202 Figueroa Street #721, Los Angeles, CA 90023 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hyattlegalplans.com>, registered with Nameking.com, Inc.

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2004.

On October 14, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hyattlegalplans.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 October 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@hyattlegalplans.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <hyattlegalplans.com> domain name is identical to Complainant’s HYATT LEGAL PLANS mark.

2. Respondent does not have any rights or legitimate interests in the <hyattlegalplans.com> domain name.

3. Respondent registered and used the <hyattlegalplans.com> domain name in bad faith.

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

FINDINGS

Complainant administers prepaid legal services nationwide and has grown to be the largest group legal plan provider in the United States since its inception in 1989.  There are over 1.8 million legal plan participants and legal services are provided through a network of 4,000 independent law firms located throughout the U.S.  Complainant has developed a significant presence on the Internet, maintaining a website accessible through the domain name <legalplans.com> since April 1996. 

Respondent registered the disputed domain name on December 29, 2002.  The domain name resolves to a website featuring a search engine and multiple advertisements.  Complainant has written numerous letters to Respondent, requesting immediate transfer of the disputed domain name.  Respondent has failed to respond to any of Complainant’s requests.

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 been using the HYATT LEGAL PLANS mark continuously in interstate commerce since 1989, however, Complainant has not registered this mark with any governmental authority.  Policy ¶ 4(a)(1) requires that Complainant have rights in a trademark or service mark that is subject to abuse by Respondent.  The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist; see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”.

Complainant has offered evidence that the mark HYATT LEGAL PLANS has obtained secondary meaning through Complainant’s continuous use of the mark in commerce since 1989 and through Complainant’s status as the largest group legal plan provider in the U.S.  Accordingly, the Panel finds that Complainant has obtained common law rights in the mark.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established; see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law”).

The domain name that Respondent registered, <hyattlegalplans.com>, is identical to Complainant’s mark because the domain name fully incorporates the mark and merely adds the generic top-level domain “.com” to the mark.  The addition of the generic top-level domain “.com” is insufficient to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See 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; see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true; see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true.

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain name.  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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true”).

Respondent is not using the domain name <hyattlegalplans.com> in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy because Respondent is attempting to capitalize illegitimately on the fame associated with Complainant’s HYATT LEGAL PLANS mark by attracting Internet users to its search engine through the use of an identical domain name.  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements; see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name.

Moreover, there is nothing in the record that indicates to the Panel that Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.  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; see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail".

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is capitalizing on the goodwill of the HYATT LEGAL PLANS mark by diverting Internet users to a search engine website.  Since the disputed domain name contains Complainant’s mark in its entirety and is used for something completely unrelated to its descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.  Therefore, Respondent’s opportunistic use of the disputed domain name represents bad faith registration and use under Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain.

Furthermore, Complainant alleges that Respondent acted in bad faith by registering and using a domain name containing Complainant’s mark.  Since the disputed domain name has no inherent connection to the use of a search engine website, such evidence supports the Panel’s inference that Respondent registered and used the disputed domain name to trade on the goodwill associated with Complainant’s mark.  Therefore, Respondent’s registration of the disputed domain name, despite knowledge of Complainant’s interests in the HYATT LEGAL PLANS mark, constitutes bad faith registration and use under Policy ¶ 4(c)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"; see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <hyattlegalplans.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  November 28, 2004

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