WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

New York Life Insurance Company v. Arunesh C. Puthiyoth

Case No. D2000-0812

 

  1. The Parties

The Complainant is New York Life Insurance Company, a New York corporation doing business at 51 Madison Avenue, New York, New York 10010, USA.

The Respondent is Arunesh C. Puthiyoth, an individual. His mailing address is 42-23 Colden Street #8F, Flushing, New York 11355, USA.

 

2. The Domain Name and Registrar

The domain names at issue are <maxnewyorklife.com> and <newyorklifeindia.com> (the Domain Names). The registrar with which the Domain Names are registered is Network Solutions, Inc., located in Herndon, Virginia, USA (the Registrar or NSI).

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complainantís Complaint by e-mail on July 17, 2000 and in hardcopy on July 20, 2000. On July 24, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

On July 24, 2000, the Center sent to the Registrar, NSI, a Request for Registrar Verification. On July 28, 2000, the Registrar transmitted to the Center, via e-mail, a Registrar Verification Response confirming that the Domain Names are registered with NSI and that the Respondent is the current registrant of the Domain Names.

The Center completed a Formalities Compliance Review on July 31, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On August 1, 2000, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding.

The Center received Respondent's Response to the Complaint by e-mail on August 21, 2000 and by hard copy on August 24, 2000. On August 23, 2000, the Center notified the parties that it would proceed to appoint the Administrative Panel. In view of the partiesí selection of a single panelist, the Center invited Dana Haviland to serve as the sole panelist. On September 8, 2000, after having received Ms. Havilandís Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules. The Decision Date was extended to September 28, 2000.

 

4. Factual Background

Complainant, New York Life Insurance Company ("Complainant") is a New York corporation with its principal place of business in New York, New York, USA. (Complaint, para. 2.) Complainant has provided financial analysis, planning, investment and consulting services under its name and trademark since at least as early as 1851. (Complaint, para. 11.) During the period 1990 through 1993, Complainant obtained U.S. trademark registrations for the marks NEW YORK LIFE, NEW YORK LIFE and Design, and NEW YORK LIFE INSURANCE COMPANY. (Id.) Complainant has spent millions of dollars advertising its services on television, in newspapers and magazines, and on billboards and other outdoor advertising. (Id.) Complainant also conducts global business, and on November 3, 1999, announced a joint venture with Max India Ltd. to provide services in India under the name "Max New York Life." (Id.)

On October 28, 1999, the Respondent registered the domain name <newyorklifeindia.com> and on November 3, 1999, the Respondent registered the domain name <maxnewyorklife.com> with NSI. (Complaint, para. 7.)

 

5. Partiesí Contentions

The Complainant contends that the Domain Names registered by the Respondent are identical or confusingly similar to Complainantís NEW YORK LIFE trademarks. (Complaint, para. 11.)

Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Names. Complainant argues first, that the Domain Names were registered long after Complainant had established rights in the New York Life marks without any license, permission or authorization by Complainant. (Id.) Moreover, Complainant contends that Respondentís lack of rights or legitimate interest in the Domain Names is shown by his failure to establish any web site for the Domain Names and his failure to use them in connection with a bona fide offering of goods or services. (Id.)

Finally, Complainant contends that the Respondent has registered and is using the Domain Names in bad faith, as is shown by the timing of Respondentís registration of the Domain Names. On November 3, 1999, Complainant announced a joint venture with Max India Ltd. to provide service in India under the name Max New York Life. That same day, Respondent registered the domain name <maxnewyorklife.com>. As further evidence of bad faith, Complainant alleges that Respondent makes no legitimate commercial use of the Domain Names and has offered the Domain Names for sale on the <Greatdomains.com> website. (Complaint, para. 11.)

Respondent contends that the Domain Names are not identical or confusingly similar to the Complainantís marks. (Response, para. 4.) Moreover, Respondent contends that the Domain Names were registered for a legitimate non-commercial use, i.e., to create a website about the lives of Indians in New York. (Response, para. 6.) The Respondent also contends that the Domain Names are merely descriptive and in the public domain. (Response, para. 7.)

 

6. Discussion and Findings

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

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

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

Identity or confusing similarity of domain name and trademark

The Panel finds that the domain names <newyorklifeindia.com> and <maxnewyorklife.com> registered by the Respondent are confusingly similar to the Complainantís NEW YORK LIFE trademarks.

No legitimate interest in domain name

The evidence demonstrates that the Respondent has no legitimate rights or interest in the Domain Names. As Complainant has shown, at the time of the filing of the Complaint, Respondent had failed to develop sites associated with either Domain Name and was offering both Domain Names for sale. The Panel is unpersuaded by, and finds no evidentiary foundation for, the Respondentís assertion that his intention was to develop a site about the lives of Indians in New York. The contention is called into question by the facts that Respondent chose domain names similar to the Complainantís marks, that Respondent registered the domain name <maxnewyorklife.com> on the same date that the Complainant announced the creation of a joint venture in India under that name and that, at the time of the filing of the Complaint, both of the Domain Names were for sale on the <GreatDomains.com> site.

Bad faith registration and use of the domain name

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "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 web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."

Here, bad faith registration and use are evidenced by the Respondentís utilization of Complainantís mark in the Domain Names, the timing of the registration of the Domain Names, and the posting of the Domain Names for sale on the <GreatDomains.com> site. Despite the Respondentís representations to the contrary, the apparent purpose of these registrations was to sell the names for valuable consideration in excess of the Respondentís out-of-pocket costs. See World Wrestling Federation, Inc. v. Bosman, ICANN Case No. D1999-0001 (offer to sell constitutes bad faith use under the policy); Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044 (offer to sell generally, not only to Complainant, can constitute bad faith even though it does not fall within paragraph 4(b)(i) of the Policy). Moreover, the evidence also indicates that Respondent registered the Domain Names in order to prevent the Complainant from reflecting its mark in a corresponding domain name. See Bragg v. Condon, ICANN Case No. FA0092528 (registration of two domain names using a competitor's trademark soon after learning of the competitor's confidential business strategy constituted bad faith). All of these factors show that Respondent has registered and is using the Domain Names in bad faith.

 

7. Decision

For the foregoing reasons, it is the decision of the Panel that the Complainant has satisfied its burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, and that the Complainantís claim for transfer of the Domain Names <maxnewyorklife.com> and <newyorklifeindia.com> is therefore granted.

 


Dana Haviland
Sole Panelist

Dated: September 28, 2000