WIPO Domain Name Dispute D2006-0568
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Guardian Life Insurance Company of America v. Titan Net
Case No. D2006-0568
1. The Parties
The Complainant is The Guardian Life Insurance Company of America, New York,
United States of America, represented by Winston & Strawn LLP, United States of
America.
The Respondent is Titan Net, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name (herein the “domain name in
dispute”) is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on May 4, 2006. On May 8, 2006, the Center transmitted by email to
Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in
connection with the domain name in dispute. On May 8, 2006, Intercosmos Media
Group d/b/a directNIC.com transmitted by email to the Center its verification response
confirming that the Respondent is listed as the registrant and providing the contact
details for the administrative, billing, and technical contact. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondent of the Complaint, and the proceedings commenced on May 10, 2006. In
accordance with the Rules, paragraph 5(a), the due date for Response was
May 30, 2006. The Respondent did not submit any response. Accordingly, the Center
notified the Respondent’s default on May 31, 2006.
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The Center appointed J. Nelson Landry as the sole panelist in this matter on June 8, 2006. 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 the Rules, paragraph 7.
4. Factual Background
The Complainant, The Guardian Life Insurance Company of America, is a large mutual
insurance company in the United States which since 1918 has offered and continues to offer a wide variety of insurance and financial services and since 1952 sells insurance under the GUARDIAN trademarks throughout the United States of America.
The Complainant has been acknowledged by superior ratings from major ratings
companies and named as one of the most admired life and health insurance companies by Forbes magazine. With assets over $35 billion it has tremendous financial strength and stability.
The Complainant has promoted and sold dental insurance throughout the United States
under the GUARDIAN trademarks since the 1970 decade through Dental Guard preferred provider organization which features an extensive nationwide dental network with over 70,000 provider locations. Through its advertisement including brochures, promotional materials, directories, forms, manuals, and communications to the field force, the trade, policyholders and the public at large and its online dental provider directory, it assists policyholders in locating nearby professional members and dental plans. It has thereby established a significant presence on the Internet, through its extensive and interactive websites “www.guardianlife.com” and
“www.guardianinvestor.com” as it appears from exhibits 5 to 117 adduced in evidence.
The Complainant is the holder of more than thirty registrations in the United States for
trademarks consisting of GUARDIAN alone or the same in association with descriptive words such as YOUR GUARDIAN FOR LIFE, THE GUARDIAN CASH
MANAGEMENT TRUST, THE GUARDIAN ADVANTAGE, THE GUARDIAN
CRITICAL DISABILITY SUPPLEMENT, as well as in a particular script or design such as in GUARDIAN & Design for various insurance and financial services (herein the “Trademarks” or “GUARDIAN Trademarks”).
As early as 1963, the United States District Court for the District of Utah gave judicial
recognition of Complainant’s Trademarks and acknowledged the long use and extensive advertising of the term “guardian” as well as the secondary meaning it had
acquired in the insurance business in the United States. In 1993, the United States District Court for the District of Connecticut held that the GUARDIAN Trademarks enjoyed enormous strength and in 2002, the Trademark Trial and Appeal Board of the United States Patent & Trademark Office held that Complainant had established a family of GUARDIAN Trademarks in the insurance field, which trademarks enjoy considerable renown and are entitled to a very broad scope of protection in the field of insurance.
The domain name in dispute was registered on January 20, 2006, and the website at the said domain name provides links to third party competitor insurance services to Internet users who are seeking information relating to dental and health insurance.
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The Respondent is not related to, licensed by, or affiliated with Complainant and the
latter has never authorized or granted permission to Respondent to use its Trademark or
to obtain the domain name in dispute.
The Respondent has recently been involved in a number of UDRP proceedings wherein
the panels held that the Respondent had misappropriated third party famous trademarks.
See for example F. Hoffmann-La Roche AG v. Titan Net,, WIPO Case No D2005-1151 and Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web
a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase,
NOLDC, Inc., WIPO Case No. D2005-0890.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it has and benefits of valid, enforceable and
unchallengeable rights in a family of registered GUARDIAN Trademarks in the United
States of America, which are famous by reason of nine decades of common law use
before their registration and their extensive and continuous promotion and use, as
reflected in the over 100 exhibits adduced in evidence; Société des Eaux de Volvic v. Volvic Village, WIPO Case No. D2004-1015.
The Complainant represents that the use of a trademark in connection with a generic
terms, such as “dental plan” does not avoid confusing similarity since the term
“guardian” is the distinctive element of the domain name in dispute. Baccarat SA v. MSL Int’l, Inc., WIPO Case No. D2005-0048, and GA Modefine S.A. v. Mark O’Flynn,
WIPO Case No. D2000-1424.
According to the Complainant, by reason of the famous character of its Trademarks
within the insurance industry and among the general public, the addition by the
Respondent of the descriptive terms “dental plan” to the Trademark does not
distinguish Respondent’s domain name from Complainant’s Trademarks, nor does it
reduce likelihood of confusion. See Government Employees Insurance Company v.
Netsolutions Proxy Services, WIPO Case No. D2004-0919 (hereinafter, Geico) and
FINAXA Société Anonyme v. Peskett, WIPO Case No. D2004-0455 (hereinafter,
Finaxa). In fact the phrase “dental plan” is a clear reference to dental insurance plans
and these added descriptive words actually enhance likelihood of confusion. See Max
Rohr, Inc. v. Puros Dawa HB S.A., WIPO Case No. D2005-0488; Accor v. S1A, WIPO
Case No. D2004-0053; Mayflower Transit, LLC v. Jonny Mayflower/Mayflowers
Moving, WIPO Case No. D2002-0722 and Accor v. Tigertail Partners, WIPO Case No.
D2002-0625.
The Complainant contends that Respondent’s registration and use of the domain name in dispute is designed to cause confusion and to deceive consumers into mistakenly
believing that Respondent and its services are offered, authorized, or sponsored by the
Complainant or are otherwise connected, associated, or affiliated with the Complainant
and that Respondent chose the domain name in dispute in order to capitalize on
Complainant’s fame and goodwill and intends to create confusion in the marketplace
through its adoption.
The Complainant further contends that the Respondent possesses no rights or legitimate
interests in respect of the domain name in dispute, in that it does not underwrite, offer,
promote or sell dental insurance under any trademark and observes that the use of the
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Trademark by the Complainant preceded Respondent’s registration of the domain name in dispute by nearly 90 years. See PepsiCo, Inc. v. LaPorte Holdings, Inc., WIPO Case
No. D2005-0087 and Chanel, Inc. v. Designer Exposure, WIPO Case No. D2000-1832.
Since the Complainant has never authorized the Respondent to use its Trademarks or to
register the domain name in dispute and that the Respondent has not registered or used
the name “guardian” as a service mark, nor has it ever been known by this name and
that the domain name in dispute is confusingly similar to the Trademarks, Respondent’s use of the domain name in dispute does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Geico, supra and Finaxa, supra.
The Complainant contends that the Respondent registered the domain name in dispute
in bad faith to intentionally attract, for commercial gain, Internet users by creating a
likelihood of confusion with Complainant’s famous Trademarks as to the source,
sponsorship, affiliation and endorsement of Respondent’s website and/or the services offered on that website, see Chanel, supra. There is no justification or plausible explanation for Respondent’s unauthorized registration of the domain name in dispute
because the name has no value apart from Complainant’s Trademarks. See Modefine,
supra.
Considering the assets of the Complainant, its age and status, as one of the oldest and
most famous insurance companies in the United States, it is inconceivable to the
Complainant that Respondent did not know about Complainant’s Trademarks prior to
registering the domain name in dispute. See Société des Eaux de Volvic, supra ;
Modefine, supra and Dr. Ing. h.c. F. Porsche, supra. The Complainant submits that the fact that Respondent registered and uses the domain name in dispute to attract internet
users to third party links competing with Complainant’s services amounts to finding
bad faith use and registration. See Geico, supra.
Finally, the Complainant contends that Respondent intentionally registered the domain
name in dispute for commercial gain and that Respondent’s illegal use of
Complainant’s Trademarks to compete with Complainant’s business cannot be
considered a bona fide use, which illegal use is part of a business plan pursuant to
which it registers famous third party trademarks as domain names, capitalizing on its
unlawful use until the rightful trademark owner takes action to reclaim its trademark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following
three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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
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(iii) The domain name has been registered and is being used in bad faith.
The Complainant has established very well through its important activities since 1918, the wide variety of insurance and financial services under its family of GUARDIAN Trademarks, in particular life and health insurance including dental insurance. Its acknowledgement as a major insurance company by Forbes magazine and major rating companies, its volume of business, the diversity and extent of its advertisements and promotional materials in particular for its Guardian Dental Insurance Services, demonstrate that the Complainant enjoys the benefits of a very important family of Trademarks in which the distinctive element is “guardian” associated with different descriptive terms as mentioned above and these Trademarks have considerable goodwill and fame associated therewith.
The fact that descriptive terms such as “dental plan” and the top level domain name “.org” are associated with the most distinctive element “guardian” does not avoid confusing similarity as it was held in Baccarat SA v. MSL Int’l, Inc. Case which finding
this Panel adopts. Furthermore, the addition of “dental plan” to the Trademark does not assist in distinguishing the domain name in dispute from Complainant’s Trademark. On the contrary, these descriptive words actually enhance the likelihood of confusion as it also has been found in numerous panel decisions cited by the Complainant.
This Panel finds that the domain name in dispute is confusingly similar with the well-known and famous Trademark GUARDIAN.
The first criterion has been met.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate
interest in the domain name in dispute by stating that the Respondent has never been known by the name and that the use of the domain name in dispute, is not legitimate non-commercial or fair. Furthermore, Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trademarks. There is no evidence that Respondent has ever engaged in any legitimate business under the Complainant’s Trademarks.
According to the evidence, the Respondent does not underwrite, offer, promote or sell dental insurance under any trademark but the Complainant’s, through the use of the domain name in dispute. The Respondent is not related to, licensed nor affiliated with the Complainant and the latter has never authorized or granted Respondent the right to use any of the Trademarks or to register the domain name in dispute.
Finally, the fact that the Respondent is using the domain name in dispute to provide a variety of links to third party website and searches relating to dental and health insurance services does not constitute a bona fide offering of goods or services pursuant
to section 4(c)(i) or a legitimate non commercial or fair use under section 4(c)(iii) of the Policy.
The second criterion has been met.
C. Registered and Used in Bad Faith
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Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of
the registration and use of the 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 the
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.”
It should be noted that the circumstances of bad faith are not limited to the above.
Upon considering the extent of use of the family of Trademarks including GUARDIAN
by the Complainant, its association with dental insurance by the Complainant and the
long standing fame of the Trademarks, this Panel finds that the adoption and
registration of the domain name in dispute is intentional and cannot be a coincidence.
As the Complainant contented, it is inconceivable that the Respondent did not know
about the Complainant and its family of Trademarks. The Complainant has provided
and cited the decision of panels in other UDRP cases which do find their application in
the present circumstances and the Panel adopts the reasoning in the Société des Eaux de
Volvic, Modefine, Dr. Ing. H.C.F. Porsche and Finaxa decisions in support of a finding
by this Panel that the registration of the domain name in dispute was done in bad faith.
The intentional registration of the domain name in dispute, its use to compete with
Complainant’s business amounts to bad faith use, not bona fide use. This bad faith use
is further exemplified in the Respondent’s attempt to mislead Internet users in diverting
them to its commercial website, as it has been found by other panels in the Geico,
Maxrohr and F. Hoffmann Laroche UDRP decisions cited by the Complainant.
The Panel finds that the domain name in dispute was registered in bad faith and is being
used in bad faith.
The third criterion has been met.
7. Decision
The Panel concludes that:
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(a) the domain name is confusingly similar to the
Complainant’s Trademarks; and
(b) the Respondent has no rights or legitimate interest in the domain name in
dispute; and
(c) the domain name in dispute has been registered and is being used in bad
faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the
Rules, the Panel orders that the domain name be transferred
to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: June 20, 2006
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