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Počkaj Pohištvo d.o.o., v. Povše Silvo [2005] GENDND 583 (14 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Alden Life Insurance Company v. Asia Ventures, Inc.

1. The Parties

The Complainant is John Alden Life Insurance Company, of Plymouth, Minnesota, United States of America, represented by Alston & Bird, LLP, United States of America.

The Respondent is Asia Ventures, Inc., GPO, Central Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name is <johnaldeninsurance.com>.

The Domain Name Registrar is The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005. On April 20, 2005, the Center transmitted by email to the Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On April 26, 2005, The Registry at Info Avenue transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the contact details for the administrative, billing, and technical contact.

On May 11, 2005, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2005. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 31, 2005.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2005.

The Center appointed Ron Klagsbald as the sole panelist in this matter on June 21, 2005. 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 paragraph 7 of the Rules.

4. Factual Background

In light of Respondent’s default, the facts stated in the Complaint remain uncontested. As the Respondent has failed to submit a response to the complaint, the Panel may accept all Complainant’s allegations as true (see Sammy’s Management Company v. Keith Wimbley, WIPO Case No. D2002-0912 referring to: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Complainant is the owner of three trademark registrations in the USA [collectively hereinafter: “the JOHN ALDEN Marks”]:

- U.S. Registration No. 1,989,529 - JOHN ALDEN COMMUNITY HEALTH PLAN registered July 30, 1996, in class 36 for health care services;

- U.S. Registration No. 1,180,468 - JOHN ALDEN registered December 1, 1981, in class 36 for insurance underwriting and brokerage services; this registration was renewed for an additional term of 10 years;

- U.S. Registration No. 1,180,469 - JOHN ALDEN and Device registered December 1, 1981, in class 36 for insurance underwriting and brokerage services; also this registration was renewed for an additional term of 10 years.

[See Exhibit 4 of the Complaint]

Since at least 1974, John Alden has offered its insurance services throughout the United States of America under the JOHN ALDEN Marks which incorporate, in whole or in part, the term “John Alden”. See, e.g., John Alden marketing exemplars, Exhibit 3 of the Complaint. Each year, Complainant spends in excess of 1 million United States dollars to advertise and promote insurance services bearing the JOHN ALDEN Marks. In 2004, gross sales of JOHN ALDEN branded insurance services exceeded 203 million United States dollars.

Complainant operates an interactive website devoted to its JOHN ALDEN insurance services at the URL “www.jalden.com” (the “John Alden website”). At this website, individuals insured by John Alden may find details regarding their coverage, locate health care providers in their area, and download insurance claim forms; health care providers may join John Alden’s network of providers; employers may find information regarding John Alden’s many employee insurance plans; and insurance brokers may view John Alden’s insurance product offerings and find information about becoming licensed to sell John Alden insurance packages. The John Alden website averages more than 20,000 hits per month from Internet users around the world.

Respondent in this administrative proceeding, Asia Ventures, Inc., is the registrant of the domain name in dispute <johnaldeninsurance.com>.

A copy of the printout of the Better-Whois.com database search results for this domain name is attached to the Complaint and marked as Exhibit 1.

5. Parties’ Contentions

A. Complainant

Complainant, John Alden Life Insurance Company, raises the following arguments. The factual elements of these contentions may be accepted as true in this case, in view of Respondent’s default to file a response.

John Alden is a member of the Assurant Health Services family of companies. The Assurant Health Services companies, and John Alden specifically, rank among the largest providers of health insurance in the United States of America. John Alden primarily serves the individual and small business insurance markets, offering, inter alia, small employer group health and dental insurance plans, health savings account plans, health reimbursement arrangement plans, and flexible spending account plans.

Since at least as early as 1974, John Alden has offered its insurance services throughout the United States of America under a variety of trademarks and service marks that incorporate, in whole or in part, the term “John Alden” (collectively, the “JOHN ALDEN Marks”). Each year, John Alden spends in excess of 1 million United States dollars to advertise and promote insurance services bearing the JOHN ALDEN Marks. In 2004, gross sales of JOHN ALDEN branded insurance services exceeded 203 million United States dollars.

As an integral part of its marketing and promotional efforts, John Alden operates an interactive website devoted to its JOHN ALDEN insurance services at the URL “www.jalden.com” (the “John Alden website”). At this website, individuals insured by John Alden may find details regarding their coverage, locate health care providers in their area, and download insurance claim forms; health care providers may join John Alden’s network of providers; employers may find information regarding John Alden’s many employee insurance plans; and insurance brokers may view John Alden’s insurance product offerings and find information about becoming licensed to sell John Alden insurance packages. The John Alden website averages more than 20,000 hits per month from Internet users around the world.

Complainant owns valid and enforceable trademark and trade name rights in and to the JOHN ALDEN Marks, including the three registrations copies of which are attached to the Complaint and marked Exhibit 4 [as mentioned above in paragraph 1 in the chapter “Factual background”]. Complainant argues that these registrations, which are valid and subsisting in law, constitute prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by Complainant.

In January 2005, John Alden became aware that Respondent had registered the domain name <johnaldeninsurance.com> (the “Domain Name”), and was using the Domain Name to host an Internet search engine devoted to insurance-related websites. Visitors to the <johnaldeninsurance.com> website are greeted by a display of “Popular Searches” in Internet search engine searches for terms such as “Insurance”, “Insurance Policy”, “Insurance Online”, “Insurance Coverage”, “Health Insurance Policy”, and “Insurance for Self Employed”. See printout from <johnaldeninsurance.com> home page, Exhibit 5 of the Complaint. By clicking on these various links, Internet users are taken to pages of Respondent’s site that provide links to third-party websites where users can check rates for and purchase competing health care coverage. See, e.g., printouts from “www.johnaldeninsurance.com” “popular links” search results pages for “Insurance” and “Health Insurance Policy”, Exhibit 6 of the Complaint. Visitors may also follow links from Respondent’s site to purchase auto insurance, whole life insurance, travel insurance, contractor insurance, and an array of other insurance products.

Respondent is also using the “www.johnaldeninsurance.com” website to host numerous links to websites related to, inter alia, automobiles, education, health, homes, and travel. See Exhibit 5 of the Complaint (links located under the heading “Main Categories”). From these links, Internet users can visit Internet pages promoting TiVo, HBO, eBay, and America Online, among many others.

Complainant contends upon information and belief, that Respondent is a member of affiliate programs operated by the owners of these third-party websites, and, through these programs, Respondent makes money each time an Internet user follows a link from the “www.johnaldeninsurance.com” website to one of the third-party sites, or when Internet users who follow such links purchase goods or services from these sites.

Complainant argues that it established: (1) that the Domain Name is identical or confusingly similar to a trademark or service mark in which John Alden owns rights; (2) that Respondent has no rights or legitimate interests in the Domain Name; and (3) that Respondent has registered and used the Domain Name in bad faith. Complainant submits that its Complaint satisfies each of these requirements. Therefore, under the Policy Complainant is entitled to the relief it requests – the transfer of the Domain Name.

John Alden acquired valid and enforceable trademark and service mark rights in the JOHN ALDEN Marks for use in connection with insurance services well before the date on which Respondent registered and began using the Domain Name [Exhibits 3 and 4 of the Complaint]. Complainant argues that consumers who see the Domain Name are certain to associate the name with Complainant because the Domain Name incorporates the JOHN ALDEN Mark in its entirety. Respondent is aware of this fact, since it uses the Domain Name to promote insurance services similar to, and in some instances directly competitive with, the services offered by John Alden.

The only difference between the JOHN ALDEN Mark and the Domain Name is the addition, in the Domain Name, of the descriptive term “insurance”. Complainant contends that such an addition only compounds the likelihood of confusion, since the addition is merely descriptive of the goods or services offered by John Alden under the JOHN ALDEN Marks. Complainant refers to Alamo Rent-A-Car Mgmt., LP v. Kang, WIPO Case No. D2003-0536 (where the domain name <alamocarrental.com> was found to be confusingly similar to complainant’s mark ALAMO for car rental services).

According to Complainant, Respondent has never used, or even made preparations to use, the Domain Name in connection with any bona fide offering of goods and services, nor has it made a legitimate non-commercial or fair use of the Domain Name. Thus, Respondent has no rights or legitimate interests in the Domain Name.

Complainant contends that Respondent is not associated or affiliated with John Alden, nor has Complainant ever authorized, licensed or permitted Respondent to register or use the Domain Name or any other mark or name that is confusingly similar to the JOHN ALDEN Marks. From the content of Respondent’s website, it is apparent that Respondent is not commonly known by the name “John Alden”, “John Alden Insurance”, or “Johnaldeninsurance.com”. In addition, Respondent’s WHOIS record [Exhibit 1 of the Complaint] does not indicate that Respondent is known by these names.

Complainant argues that Respondent merely uses the Domain Name to host links to numerous third-party websites offering a wide variety of goods and services, including insurance services virtually identical to those offered by John Alden. This use belies any effort that Respondent may make to argue that he is making a legitimate, non-commercial use or bona fide offering of goods or services. Complainant refers to Six Continents Hotels, Inc. v. Cortlandt Colonial Restaurants and Receptions, WIPO Case No. D2003-0292 and Whites Cove Corp. v. Lobster City, National Arbitration Forum Case No. FA0310000206344.

Complainant contends that the Complaint clearly meets the requirements for bad faith – Paragraphs 4(b)(ii) and (iii) of the Policy. However, the circumstances mentioned in Paragraph 4(b) of the Policy are not exhaustive, and panels may consider other circumstances that support a finding that the Respondent acted in bad faith. Complainant argues that circumstances described in Paragraph 4(b) of the Policy are without limitation and other circumstances can be evidence of bad faith (Complainant cites: Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Complainant argues that in the present case, Respondent’s actions constitute bad faith registration and use of the Domain Name for a number of reasons, including the following:

(i) Respondent registered the Domain Name with full knowledge of John Alden’s rights in the John Alden Marks. Indeed, Respondent must be aware of John Alden in order to use the Domain Name to host content related to the insurance services offered under the JOHN ALDEN Marks. This use alone evidences Respondent’s bad faith.

(ii) Respondent has attempted to attract, for commercial gain, Internet users to its and other on-line locations by registering and using the Domain Name, which is confusingly similar to the JOHN ALDEN Marks. Respondent’s actions are clearly designed to generate profit for Respondent thorough affiliate programs when confused Internet users who mistakenly believe that John Alden is affiliated with or sponsors Respondent and the parties whose goods and services are advertised on Respondent’s website, click on the links hosted by Respondent. Respondent uses the goodwill associated with the John Alden Marks to divert Internet users looking for John Alden’s own corporate website to other online locations operated by John Alden’s competitors, all for Respondent’s gain. Respondent’s actions thus constitute a textbook case of bad faith registration and use under Paragraphs 4(b)(iii) and (iv) of the Policy.

(iii) Respondent has engaged in a pattern of registering domain names that trade on the fame and goodwill established by trademark and service mark owners, and that prevent the owners of those trademarks or service marks from reflecting their marks corresponding domain names. Indeed, Respondent is no stranger to the UDRP dispute resolution policy. Complainant refers to five UDRP decisions in which Respondent was found to have acted in bad faith in registering the domain names at issue. This pattern of conduct constitutes further evidence of Respondent’s bad faith in this instance, according to Paragraph 4(b)(ii) of the Policy.

Complainant contends that for each of these reasons, Respondent has registered and used the Domain Name in bad faith.

B. Respondent

The Respondent did not file a response and did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, according to Paragraph 4(i) of the Policy, a complainant must prove the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel will discuss these elements one by one:

A. Respondent’s Domain Name is identical or confusingly similar to Complainant’s Mark (Policy, Paragraph 4(a)(i))

(i) Complainant has rights in the JOHN ALDEN Marks. These marks, which include the name “John Alden”, are federally registered in the USA in the US Patent and Trademark Office in class 36 for insurance services. The Complainant is the owner of these trademark registrations [Paragraph V.A. of the Complaint, Exhibit 4 of the Complaint].

(ii) Since at least 1974, Complainant has offered its insurance services throughout the United States of America under the JOHN ALDEN Marks. See, e.g., Exhibit 3 of the Complaint. Each year, John Alden spends more than 1 million United States dollars to advertise and promote insurance services bearing the JOHN ALDEN Marks. In 2004, gross sales of JOHN ALDEN branded insurance services exceeded 203 million United States dollars.

(iii) The domain name that Respondent has registered <johnaldeninsurance.com> is almost identical visually and phonetically to Complainant’s JOHN ALDEN marks.

The only difference between the JOHN ALDEN Mark and the Domain Name in dispute is the addition, in the Domain Name, of the descriptive term “insurance”. As argued by Complainant, indeed such an addition only compounds the likelihood of confusion, since the addition is merely descriptive of the services offered by Complainant under the JOHN ALDEN Marks. See, for example: Alamo Rent-A-Car Mgmt., LP v. Kang, WIPO Case No. D2003-0536 (where the domain name <alamocarrental.com> was found to be confusingly similar to complainant’s mark ALAMO for car rental services).

The disputed domain name consists of the mark JOHN ALDEN and the term “insurance”, which describes Complainant’s main field of activity. An Internet user who reaches the website operating under the disputed domain name, may be misled to believe that this site is Complainant’s site or sponsored or authorized by Complainant.

This Panel holds that Respondent’s domain name is confusingly similar to Complainant’s JOHN ALDEN marks.

B. Respondent has no Rights or Legitimate Interests in respect of the Domain Name (Policy, Paragraph 4(a)(ii))

Complainant has established that Respondent is not associated or affiliated with Complainant, nor has Complainant ever authorized, licensed or permitted Respondent to register or use the Domain Name or any other mark or name that is confusingly similar to the JOHN ALDEN Marks. From the content of Respondent’s website, it is apparent that Respondent is not commonly known by the name “John Alden”, “John Alden Insurance”, or “johnaldeninsurance.com”. In addition, Respondent’s WHOIS record [Exhibit 1 of the Complaint] does not indicate that Respondent is known by these names.

In light of Respondent’s default, the Panel finds that Complainant has established that Respondent does not own any registered or common law marks containing the name John Alden or any similar derivations thereof. Further, Respondent is not operating any business or organization under the disputed domain name and is not making legitimate, non-commercial or fair use of the disputed domain name.

Respondent uses the Domain Name merely to host links to numerous third-party websites offering a wide variety of goods and services, including insurance services virtually identical to, namely competing with, those offered by John Alden. As previously held by WIPO panels, Respondent’s use of the domain name to sell or promote goods or services, which are competitive to Complainant’s goods or services constitute prima facie evidence of lack of legitimate rights in the domain name. See, for example: Six Continents Hotels, Inc. v. Cortlandt Colonial Restaurants and Receptions, WIPO Case No. D2003-0292, and Whites Cove Corp. v. Lobster City, National Arbitration. Forum Case No. FA0310000206344.

This Panel concludes that Complainant has shown a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name <johnaldeninsurance.com>. In the absence of rebuttal by the Respondent, the Complainant has made out the second element of the Policy.

C. Respondent has Registered and Used the Domain Name in Bad Faith (Policy, Paragraph 4(a)(iii))

Paragraph 4(b) of the Policy lists particular circumstances, without limitation, that if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

Respondent registered the Domain Name with full knowledge of Complainant’s rights in the JOHN ALDEN Marks. Respondent must have been aware of John Alden in order to use the Domain Name to host content related to the insurance services offered under the JOHN ALDEN Marks.

Respondent has attempted to attract, for commercial gain, Internet users to its and other on-line locations by registering and using the Domain Name, which is confusingly similar to the JOHN ALDEN Marks. Respondent’s actions are designed to generate profit for thorough affiliate programs when confused Internet users who mistakenly believe that John Alden is affiliated with or sponsors Respondent and the parties whose goods and services are advertised on Respondent’s website, click on the links hosted by Respondent. Respondent uses the goodwill associated with the JOHN ALDEN Marks to divert Internet users looking for John Alden’s own corporate website to other online locations operated by Complainant’s competitors, all for Respondent’s gain. Respondent’s actions thus constitute bad faith registration and use under Paragraphs 4(b)(iii) and (iv) of the Policy.

Finally, Complainant has shown that Respondent has acted in a pattern of registering domain names that trade on the fame and goodwill established by trademark and service mark owners, and that prevent the owners of those trademarks or service marks from reflecting their marks corresponding domain names. Complainant refers to five UDRP decisions in which Respondent was found to have acted in bad faith in registering the domain names at issue. Indeed, this pattern of conduct constitutes further evidence of Respondent’s bad faith in this instance, according to Paragraph 4(b)(ii) of the Policy.

This Panel concludes that Respondent’s registration and use of the domain name <johnaldeninsurance.com>, as set forth hereinabove, constitutes registration and use of the domain name in bad faith according to Paragraph 4(a)(iii) of the Policy.

7. Conclusion

In light of the Panel’s findings as set forth hereinabove, the Panel finds that the Complainant has proven the cumulative elements which, according to Paragraph 4(a) of the Policy, justify an order for the transfer of the domain name as prescribed in paragraph 4(i) of the Policy, namely: (i) the domain name <johnaldeninsurance.com> is confusingly similar to the JOHN ALDEN Marks in which Complainant has rights; and (ii) Respondent, has no rights or legitimate interests in or with respect to this domain name; and (iii) Respondent has registered and used the domain name in bad faith.

8. 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 domain <johnaldeninsurance.com>, be transferred to the Complainant.

Ron Klagsbald
Sole Panelist

Dated: June 30, 2005