Endurancereinsurance.com

The timeline behind endurancereinsurance.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 Endurance Specialty Holdings Ltd. v. Marketing Total S.A. Claim Number: FA0710001103590 PARTIES Complainant is Endurance Specialty Holdings Ltd. (“Complainant”), represented by David M. Perry, of Blank Rome LLP, One Logan Square, Philadelphia, PA 19103-6998. Respondent is Marketing Total S.A. (“Respondent”), P.O. Box 556, Main Street, Charlestown, West Indies KN. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <endurancereinsurance.com>, registered with Capitoldomains, LLC. 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. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2007. On October 29, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <endurancereinsurance.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 November 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 21, 2007 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@endurancereinsurance.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <endurancereinsurance.com> domain name is identical to Complainant’s ENDURANCE REINSURANCE mark. 2. Respondent does not have any rights or legitimate interests in the <endurancereinsurance.com> domain name. 3. Respondent registered and used the <endurancereinsurance.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Endurance Specialty Holdings, Ltd, has continuously used the ENDURANCE REINSURANCE mark since December 2002 in the insurance industry in connection with Complainant’s reinsurance business. Complainant has conducted billions of dollars in insurance business under its mark and is cited in numerous Internet articles and listings that advertise, promote and/or discuss Complainant by using the ENDURANCE REINSURANCE mark. The ENDURANCE REINSURANCE mark is also used in regular publications of Complainant providing information to clients and employees. Respondent’s <endurancereinsurance.com> domain name was registered on October 16, 2006 and resolves to a commercial search engine, pop-up advertisements and a series of sponsored links that direct Internet users to various third-parties, many of whom offer insurance services in direct competition with those offered under Complainant’s mark. Further, at least twelve complaints have been filed in the last year against Respondent through the National Arbitration Forum, eleven of which have resulted in the transfer of a disputed domain name from Respondent. See, e.g., Questar Corp. v. Marketing Total S.A., FA 819504 (Nat. Arb. Forum Nov. 21, 2006); Enterprise Rent-A-Car Co. v. Marketing Total S.A., FA 843582 (Nat. Arb. Forum, Dec. 29, 2006); Bealls, Inc. v. Marketing Total S.A., FA 882153 (Nat. Arb. Forum, Feb. 21, 2007). 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 need not have registered its mark with a governmental authority, so long as it can establish continued use and secondary meaning in its mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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). Complainant has continuously used since December 2002 the ENDURANCE REINSURANCE mark in the insurance industry in connection with its reinsurance business. Complainant has conducted billions of dollars in insurance business under its mark and is cited in numerous Internet articles and listings that advertise, promote and/or discuss Complainant by using the ENDURANCE REINSURANCE mark. The ENDURANCE REINSURANCE mark is also used in regular publications of Complainant providing information to clients and employees. The Panel finds that Complainant has established common-law rights in the ENDRUANCE REINSURANCE mark through continued use and demonstrated secondary meaning pursuant to Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services). Respondent’s <endurancereinsurance.com> domain name contains Complainant’s ENDURANCE REINSURANCE mark in its entirety, omitting the space, and adding the generic top-level domain (“gTLD”) “.com.” It is well-established that the omission of a space and inclusion of gTLD are irrelevant in a Policy ¶ 4(a)(i) analysis. As a result, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark. See 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”); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES). The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”). The Panel finds that Complainant has established a prima facie case and that the burden is accordingly shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). No response has been filed in this case. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the <endurancereinsurance.com> domain name but will still nontheless examine the record in consideration of the factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the disputed domain name. The Panel finds that absent any evidence to the contrary Respondent is not commonly known by the <endurancereinsurance.com> domain name pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also 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). The <endurancereinsurance.com> domain name resolves to a commercial search engine, pop-up advertisements, and a series of sponsored hyperlinks, which if clicked upon redirect Internet users to various third-parties, many of whom offer insurance services in direct competition with those offered under Complainant’s ENDURANCE REINSURANCE mark. The Panel finds that this does not constitute 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user). The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith At least twelve complaints have been filed in the last year against Respondent through the National Arbitration Forum, eleven of which have resulted in the transfer of a disputed domain name from Respondent. See, e.g., Questar Corp. v. Marketing Total S.A., FA 819504 (Nat. Arb. Forum Nov. 21, 2006); Enterprise Rent-A-Car Co. v. Marketing Total S.A., FA 843582 (Nat. Arb. Forum, Dec. 29, 2006); Bealls, Inc. v. Marketing Total S.A., FA 882153 (Nat. Arb. Forum, Feb. 21, 2007). The Panel finds this sufficient to establish a pattern of registering infringing domain names and a finding that Respondent has then registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”). Further, Respondent’s <endurancereinsurance.com> domain name resolves to a website featuring a list of sponsored links to third-parties, many of whom offer insurance services in direct competition with those offered under Complainant’s mark. The Panel finds this to be additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (Respondent registered a domain name that diverted Internet users to the complainant’s competitor's websites. The Panel stated that as a result it was “a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). Lastly, the <endurancereinsurance.com> domain name is presumed to financially benefit Respondent through the use of ‘click-through’ fees for every Internet user who clicks or views Respondent’s commercial search engine, pop-up advertisements, and sponsored hyperlinks to third-party competitors of Complainant. The Panel finds this to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to pop-up advertisements constituted bad faith use of the domain name); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”) The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii). 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 <endurancereinsurance.com> domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr., Panelist Dated: December 12, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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