Landmark-insure.com

The timeline behind landmark-insure.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION American International Group, Inc. v. Richard Mandanice Claim Number: FA0305000159401 PARTIES Complainant is American International Group, Inc., New York, NY (“Complainant”) represented by Claudia Werner Stangle. Respondent is Richard Mandanice, Delson, CA (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <landmark-insure.com>, registered with Enom, 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. Honorable Paul A. Dorf (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 23, 2003; the Forum received a hard copy of the Complaint on May 27, 2003. On May 28, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <landmark-insure.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 2003 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@landmark-insure.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 26, 2003, 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 name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <landmark-insure.com> domain name is confusingly similar to Complainant’s LANDMARK mark. 2. Respondent does not have any rights or legitimate interests in the <landmark-insure.com> domain name. 3. Respondent registered and used the <landmark-insure.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, American International Group, Inc., and its predecessors in interest have used the LANDMARK mark in connection with insurance services since 1978. On March 7, 1989, the LANDMARK mark was registered on the Principal Register of the U.S. Patent and Trademark Office (U.S. Reg. No. 1,528,657) covering the underwriting of property/casualty insurance and health insurance. Complainant also holds registrations for the LANDMARK mark in the United Kingdom (Reg. No. B1,406,719) and in the European Community (Reg. No. 91264). Respondent, Richard Mandanice, registered the <landmark-insure.com> domain name on April 20, 2003, and is not licensed or authorized to use Complainant’s LANDMARK mark for any purpose. By May 20, 2003, Respondent was hosting an adult-oriented website entitled “Tina’s Free Live Cam.” Any attempt by Internet users to close their web browser upon reaching this website would launch an additional window displaying a “pop-up” advertisement, inviting Internet users to explore how to see Tina naked “without giving out your credit card number.” The Panel notes that Respondent has been hailed before previous administrative Panels for alleged cybersquatting behavior in the past. In each decision, the disputed domain name was transferred to Complainant. See Carrefour v. Richard Mandanice, D2002-0623 (WIPO Sept. 12, 2002); The Dream Merchant Co. Kft. and Creations Meadres Inc. v. Richard Mandanice d/b/a Domain Strategy Inc., FA 137097 (Nat. Arb. Forum Jan. 23, 2003); Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002). 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 LANDMARK mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, registration of the mark with the appropriate governmental authorities abroad, and through continuous use and promotion of the mark in commerce since 1978. Respondent’s <landmark-insure.com> domain name is confusingly similar to Complainant’s LANDMARK mark. The disputed domain name entirely appropriates Complainant’s LANDMARK mark with the addition of the word “insure.” The word “insure” describes the type of business that Complainant conducts under the LANDMARK mark, meaning the addition of this word operates to increase the confusing similarity between Complainant’s arguably generic mark and the domain name. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brambles Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with Complainant’s business). Accordingly, the Panel finds that the <landmark-insure.com> domain name is confusingly similar to Complainant’s LANDMARK mark under Policy ¶ 4(a)(i). Rights or Legitimate Interests Respondent is using a confusingly similar variation of Complainant’s mark to subject Internet users to adult-oriented material. While Complainant’s LANDMARK mark is arguably generic, the addition of the word “insure” to the mark makes it apparent that Respondent is attempting to benefit from the goodwill surrounding Complainant’s mark with its registration of the disputed domain name. In using Complainant’s mark to profit off of misdirected Internet users, Respondent is making neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark). Respondent has already had several claims brought against it under the UDRP. In each of those cases, the disputed domain name was transferred to the appropriate Complainant. In light of the fact that Respondent appears to be a serial cybersquatter, and that there is no evidence before the Panel to indicate otherwise, the Panel finds that Respondent is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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"). Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <landmark-insure.com> domain name under Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent registered and used the disputed <landmark-insure.com> domain name in bad faith. Given the fact that Respondent registered a domain name which not only incorporates Complainant’s registered mark, but also includes a word that perfectly describes Complainant’s commercial activities under that mark, the Panel inferrs that Respondent deliberately registered a domain name that created a likelihood of confusion as to the source or sponsorship of the resultant website. Respondent then used its abusive registration to host an adult oriented website. Such use not only brings Respondent commercial gain, but tarnishes Complainant’s mark. These circumstances are evidence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if it used the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”). The Panel thus finds that Respondent registered and used the <landmark-insure.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied. DECISION Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <landmark-insure.com> domain name be TRANSFERRED from Respondent to Complainant. Honorable Paul A. Dorf (Ret.) Panelist Dated: July 11, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.