Fortisbenefit.com

The timeline behind fortisbenefit.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.

NATIONAL ARBITRATION FORUM DECISION Fortis SA/NV and Fortis NV v. Albert Jackson Claim Number: FA0503000435002 PARTIES Complainant is Fortis SA/NV and Fortis NV (“Complainant”), represented by Marsha Stolt, of Moss & Barnett, P.A., 90 So. Seventh St., 4800 Wells Fargo Center, Minneapolis, MN 55402-4129. Respondent is Albert Jackson (“Respondent”), PO Box 2014, George Town, Grand Cayman KY. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <fortisbenefit.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 8, 2005. On March 7, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the domain name <fortisbenefit.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. 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 March 10, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 30, 2005 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@fortisbenefit.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 April 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin 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 <fortisbenefit.com> domain name is confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark. 2. Respondent does not have any rights or legitimate interests in the <fortisbenefit.com> domain name. 3. Respondent registered and used the <fortisbenefit.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Fortis SA/NV and Fortis NV (collectively “Complainant”) are joint parent companies of a group of international companies. Complainant is one of the largest providers of financial, business and insurance services, including insurance, annuities, cash and asset management services and employee benefits and pension plan management. Complainant uses the FORTIS BENEFITS INSURANCE COMPANY mark in conjunction with these services. Complainant has registered the FORTIS BENEFITS INSURANCE COMPANY mark with the U.S. Patent and Trademark Office (“USPTO”) (Reg. No. 2,593,554 issued July 16, 2002). Respondent registered the <fortisbenefit.com> domain name on August 12, 2003. Respondent’s domain name resolves to a website that features links to competing insurance-related 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 FORTIS BENEFITS INSURANCE COMPANY mark through registration of the mark with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The 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.”). Respondent’s <fortisbenefit.com> domain name is confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark. Respondent’s domain name incorporates Complainant’s mark and omits the terms “insurance” and “company,” leaving “fortis” and “benefits” (which it changes to the singular form, “benefit”), the dominant features of Complainant’s mark. Such minor changes are insufficient to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to the complainant’s mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies the complainant independently of the word “Edge”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Furthermore, the addition of the generic top-level domain “.com” and the omission of the spaces in between the terms of Complainant’s mark is insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has failed to respond to the Complaint. Thus, the Panel may accept all reasonable allegations and assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). Complainant has asserted that Respondent has no rights or legitimate interests in the disputed domain name, and Respondent, in not submitting a response, has failed to rebut this assertion. Thus, the Panel may interpret Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the <fortisbenefit.com> domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Respondent is using the confusingly similar <fortisbenefit.com> domain name to operate a website that features links to competing insurance-related services. The Panel finds that such competing use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where the respondent generated commercial gain by intentionally and misleadingly diverting users away from the complainant’s site to a competing website). Furthermore, nothing in the record indicates that Respondent is either commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <fortisbenefit.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS information implies that the respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is using the <fortisbenefit.com> domain name, which is confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark, to operate a website that features links to competing insurance-related services. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). The Panel infers that Respondent receives click-through fees for diverting Internet users to competing websites. Since Respondent’s domain name is confusingly similar to Complainant’s FORTIS BENEFITS INSURANCE COMPANY mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <fortisbenefit.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the Complaint, it may be concluded that the 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 the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). Furthermore, Respondent registered the <fortisbenefit.com> domain name with actual or constructive knowledge of Complainant’s rights in the FORTIS BENEFIT INSURANCE COMPANY mark due to Complainant’s registration of the mark with the USPTO. Moreover, the Panel infers that Respondent registered the domain name with actual knowledge of Complainant’s rights in the mark due to the obvious connection between the content advertised on Respondent’s website and Complainant’s business. Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights in the mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when the respondent reasonably should have been aware of the complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the complainant’s mark when it registered the subject domain name”). 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 <fortisbenefit.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice Supreme Court, NY (Ret.) Dated: April 21, 2005 NATIONAL ARBITRATION FORUM

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