WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Indemnity Company, National Liability & Fire Insurance Company v. Barak Hosting/ Domain Manager
Case No. D2008-0182
1. The Parties
Complainants are National Indemnity Company and National Liability & Fire Insurance Company (referred to jointly as the “Complainant”), Omaha, Nebraska, United States of America, represented by Neal & McDevitt, United States of America.
Respondent is Barak Hosting/ Domain Manager, Palm Beach Gardens, Florida, of United States of America.
2. The Domain Names and Registrar(s)
The disputed domain names <berkshirehathawayassurance.biz>, <berkshire-hathaway-assurance.com>, <berkshirehathawayassurance.com>, <berkshirehathawayassurancecorp.com>, <berkshirehathawayassurance.info>, <berkshirehathawayassurance.net>, <berkshirehathawayassurance.org>, and <berkshirehathawayinsurance.com> (the “Domain Names”) are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2008. On February 5, 2008, the Center transmitted by email to eNom, Inc., a request for registrar verification in connection with the domain names at issue. On February 5, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 20, 2008. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on February 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2008
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on March 27, 2008. 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 following uncontested facts are summarized from the Complaint.
Complainant owns the relevant trademarks, BERKSHIRE HATHAWAY GROUP® and various formatives thereof (“Complainant’s Marks” or “Berkshire Hathaway Marks”), and Complainant uses them in connection with insurance underwriting, casualty insurance, and reinsurance. Berkshire Hathaway Inc., Complainant’s ultimate parent company, owns and has registered the domain names <berkshirehathaway.com>; <berkshirehathaway.biz>; <berkshirehathaway.info>; <brka.com>; <brka.biz>; and <brka.info>. Since 1988, Complainant has used the Berkshire Hathaway Marks and name in connection with insurance underwriting, casualty insurance, and reinsurance services providers. Complainant and Berkshire Hathaway Inc. are also well-known internationally, particularly in the insurance and reinsurance industries.
5. Parties’ Contentions
Complainant contends as follows:
The Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Names contain Complainant’s identical marks and have led to actual confusion based on Respondent’s use of the Domain Names.
Respondent has no rights or legitimate interests in respect of its use of the Domain Names. Respondent does not own any trademark containing any component of the Domain Names. There is no evidence that Respondent has used or prepared to use the Domain Name in connection with a bona fide offering of goods or services. Respondent is not making a legitimate non-commercial or fair use of the Domain Names.
Respondent has registered and used the Domain Names in bad faith. Respondent, by creating a likelihood of confusion with the Complainants’ Marks attempted to profit by causing consumer confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Further, Complainant’s correspondence to Respondent were returned as undeliverable, due to Respondent’s providing the Registrar with an incomplete or false address.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the Berkshire Hathaway Marks, by virtue of its registration with the United States Patent and Trademark Office. The Panel further finds that the Domain Names are confusingly similar to Complainant’s Marks. The Domain Names incorporate Complainant’s Marks in full and add the words “assurance”, “insurance,” and/or “corp,” which are descriptive of Complainants’ service industry. The addition of a descriptive or non-descriptive matter does not prevent a confusion between the Complainant’s Marks and the Domain Name. Pfizer, Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-1206.
It is also well established that the inclusion of a gTLD in a domain name, such as “.com”, “.info,” .biz,” “.net,” or “.org” does not change the likelihood of a confusion. Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053.
The Panel, therefore, finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122. Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Names. The record does not contain any evidence that Respondent has been commonly known by the Domain Names.
Respondent has also not used the Domain Names in connection with a bona fide offering of goods or services, and Respondent’s use is neither a legitimate nor fair use. Complainant has shown that Respondent has used the Domain Names on its web main page and has an e-mail address that diverts consumers to a non-Berkshire Hathaway mailbox. Such “commercial” use does not constitute use of the Domain Names in connection with a bona fide offering of goods or services, and is not legitimate non-commercial or fair use. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark in one’s domain name and the commercial use of the corresponding web site do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); Microsoft Corp. v. Gioacchino Zerbo, WIPO Case No. D2005-0644.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides several nonexclusive circumstances that provide evidence of bad faith registration and use of a domain name, including evidence that (i) Respondent acquired a domain name for the purpose of selling the domain name to a trademark owner for valuable consideration in excess of the Respondent’s out-of-pocket expenses; (ii) The domain name was registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; (iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; and (iv) Respondent intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion.
The Panel finds that Respondent registered and used the Domain Names to intentionally attract Internet users to its websites by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Given the registrations of Complainant’s trademarks, the Panel finds that in all likelihood, Respondent registered the Domain Names with knowledge of Complainant’s Marks. See Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. Plogyenix Group Co., WIPO Case No. D2000-0163. Moreover, Respondent used the Domain Names to provide the consumers with the opportunity to send information and questions about Berkshire Hathaway Assurance Corporation to the e-mail address @BerkshireHathawayAssurance.com. The Panel finds that in all likelihood, Respondent attempted to profit by causing consumer confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Further, the evidence indicates that Respondent has provided an inaccurate address to the Registrar. Respondent’s failure to provide or maintain accurate contact information makes the Respondent appear to be a cybersquatter who hoards domain names and is evidence of bad faith. See e.g. Spice Entertainment, Inc. v. Fleming, WIPO Case No. D2006-0114 (“[T]hose who incorporate the marks of others in domain names must be prepared to address inferences that arise from using methods to hide their identities from complainants who seek to protect their interests in such marks”); Playboy Enters. Inter’l, Inc. v. Pitts, WIPO Case No. D2006-0675.
For these reasons, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <berkshirehathawayassurance.biz>, <berkshire-hathaway-assurance.com>, <berkshirehathawayassurance.com>, <berkshirehathawayassurancecorp.com>, <berkshirehathawayassurance.info>, <berkshirehathawayassurance.net>, <berkshirehathawayassurance.org>, and <berkshirehathawayinsurance.com> be transferred to the Complainant.
Maxim H. Waldbaum
Date: April 10, 2008