WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Factory Mutual Insurance Company v. Valuable Web Names
Case No. D2008-1014
1. The Parties
Complainant is Factory Mutual Insurance Company, Johnston, Rhode Island, United States of America, represented by the law firm Venable LLP, United States of America.
Respondent is Valuable Web Names, Beaverton, Oregon, United States of America, internally represented.
2. The Domain Name and Registrar
The disputed domain name <myrisk.com> is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2008. On July 4, 2008, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On July 7, 2008, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the 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's counsel and the Center engaged in correspondence that resulted in the Center's referring to the Panel (upon appointment) a possible deficiency in the Complaint.1 Subject to such review, 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 July 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2008. The Response was filed with the Center on July 30, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 7, 2008. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On August 6, 2008, Complainant filed a supplemental filing entitled “Reply in Support of the Complaint.” The Panel denied leave to file this pleading by order transmitted by the Center to the parties on August 11, 2008.2
4. Factual Background
Complainant is an insurance company that has been in business since 1835. Complainant provides, among other things, commercial and industrial property insurance, varied technical and risk management solutions, and property loss prevention research. It maintains its principal website at “www.fmglobal.com”.
One of Complainant's services is a private and secure website, accessible only to its clients and their advisors at “www.fmglobal.com/myrisk”, at which Complainant provides current information about property risks and offers access to other risk management and decision-making tools. Since 2004 this service has been offered worldwide under the brand name MYRISK. The site and the service offered there currently have over 17,000 registered users. Complainant registered MYRISK as a service mark with the United States Patent and Trademark Office (USPTO) based on a first use in commerce of November 2004. Complainant filed its application with the USPTO in April 2004 and the mark was duly registered in December 2005. Complainant also holds service marks for MYRISK in Australia, Canada, and the European Community.
One of Respondent's businesses is the sale of domain names that incorporate common phrases. Another business involves “affiliate advertising program[s],” a practice that appears very similar, perhaps identical, to pay-per-click advertising. Respondent uses the disputed domain name with such an affiliate advertising program. In Respondent's words, this site “posts links related to the word inside ‘risk'.” Links are “auto-generated” to items “relevant to the dictionary meaning of the word ‘risk,” such as security systems, business interruption analysis, business continuity planning, crisis management, and vulnerability assessment. Other links include standard references to popular travel sites and some medical-related topics such as heart disease and breast cancer. At the top of the webpage maintained at the disputed domain name are the words “this domain is for sale. Request quote.” Among the links on this website is a link to Complainant's homepage under the heading “A Leader in Commercial Property Insurance and Risk Management,” followed by the Internet address of Complainant's principal website.
Respondent registered the disputed domain name either in July 2006 (according to an attachment to the Response) or early 2008 (according to information furnished with the Complaint).
5. Parties' Contentions
A. Complainant contends as follows:
Rights in a mark. Complainant has valid and enforceable service mark rights in MYRISK by reason of its USPTO-registered mark (and marks in other countries), and continuous use of these marks for insurance services since 2004. The disputed domain name is identical to Complainant's marks except for the addition of the top-level domain “com”.
Respondent lacks rights or legitimate interests in the disputed domain name and registered and used it in bad faith. Complainant has not authorized Respondent to use its mark. Pay-per-click link services “[are] per se not a legitimate commercial use, and [are] proof of bad faith.” Respondent's use of the disputed domain name for a website that includes pay-per-click links to other risk management and insurance services — Complainant's competitors — and the unauthorized direct link back to Complainant's website “conclusively proves” Respondent's intent at the time of registration. Respondent's public and prominent offer to sell the disputed domain name is further evidence of registration and use in bad faith. Respondent cannot demonstrate any right or legitimate interest in these circumstances, particularly when MYRISK is “a unique and well known trademark [sic].”
B Respondent contends as follows:
Rights in a Mark. Respondent does not dispute Complainant's assertions under Paragraph 4(a)(i) of the Policy.
Respondent has rights or a legitimate interest in the disputed domain name and did not register or use it in bad faith. Complainant's marks consist of two common dictionary words that make up a common everyday phrase. On the Internet this phrase appears on more than 200,000 third-party websites “wholly unrelated to Complainant,” and Complainant has no exclusive right to it. Because the words are “generic” or the phrase is used often in everyday English, “Respondent, ipso facto, has rights and a legitimate interest” in it. Respondent's business includes acquiring domain names incorporating common phrases, and such a business is not unlawful or in violation of the Policy. Nor is pay-per-click (“affiliate”) advertising.
Complainant offers no evidence that Respondent registered the disputed domain name in bad faith or to profit from Complainant's service mark rights. Given the common usage of the words in Complainant's marks, Complainant “must provide evidence that demonstrates that Respondent has specifically intended to confuse consumers seeking out Complainant. [Again,] no such proof has been provided.” Complainant has shown no distinctiveness of the phrase when associated with Complainant's goods or services. Because the disputed domain name is generic the first-come, first-serve rule applies to its registration. Respondent had no knowledge of Complainant or its mark when it registered the disputed domain name.
6. Discussion and Findings
In order to prevail Complainant must, by a preponderance of the evidence, prove the elements set out in paragraph 4(a) of the Policy:
(i) The disputed 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 to the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
Respondent has conceded similarity to Complainant's marks, so here paragraph 4(a)(i) of the Policy has been satisfied. Both parties in their respective arguments appear to acknowledge, as is often the case in proceedings involving domain name aggregators, that whether Respondent has right or a legitimate interest in the disputed domain name and whether it registered that domain name in bad faith turn on the same analysis. Each party here asserts a bright line rule in support of its position on these issues.
The simple gist of Respondent's defense is that anyone who is first to register has a right to an available domain name that consists of or includes a common word or phrase, regardless of trademark rights of others. That is simply not true. Many registered marks, some of them famous, are everyday words or phrases. Many panels have ordered transfer of domain names when the word or phrase is a common word, “generic,” or “descriptive,” even in some cases when that word or phrase is not a registered mark.3
Here, of course, Complainant's mark was registered well before Respondent registered the disputed domain name. That fact alone does not establish bad faith. Unlike United States of America trademark law, prevailing practice under the Policy usually requires proof, even if the mark be registered, that the respondent actually knew of the complainant's mark; panels under the Policy normally decline to apply the trademark doctrine of constructive notice, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4.
Complainant's proposed bright line is equally misplaced. Pay-per-click advertising is not automatic and conclusive proof of cybersquatting. On the contrary, neither this practice nor the buying or selling of domain names, standing alone (or even the two together), necessarily ends the analysis under paragraphs 4(a)(i) or 4(a)(ii).4 Again the determinative issue is usually whether in making use of complainant's mark in these businesses respondent knew of the marks and selected them for the goodwill attached to them. Align Technology, Inc v. Web Reg/Rarenames/Aligntechnology.com, WIPO Case No. D2008-0103.
Complainant's MYRISK mark is not as Complainant would have it either unique or especially well known. Complainant has used it in a single industry for less than five years, and many other companies, in other businesses, also use it. It is a common phrase that might well have been chosen by Respondent for that reason rather than to poach Complainant's goodwill.
No one but Respondent knows for certain what its motivation was for acquiring the disputed domain name. Without cross-examination and discovery all the Panel has available to consider is the objective evidence in the record. The record in this proceeding points firmly toward actual knowledge. Notwithstanding its denial of this fact Respondent certainly was aware of Complainant,5 since its website identifies Complainant by name and includes a link to Complainant's main web page. The main topic of Respondent's website, as Respondent acknowledges, is insurance-related matters. While insurance is one subject suggested by MYRISK's everyday meaning, it is not the only one or necessarily the most obvious or commercially exploitable one.6 Respondent's election to use the phrase for Complainant's line of business strongly suggests it was aware of Complainant's mark. Moreover, by selecting links to the insurance business Respondent to some extent may be expected, consistently with its undertaking in its registration agreement that “to the best of [its] knowledge and belief, neither the registration of the Domain Name nor the manner in which it is directly or indirectly used, infringes on the legal rights of any third party,” to have some knowledge of his competitors and their marks – even common word marks. See Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2007-1189 (“By using the disputed domain names for services that target the same general audience as Complainant, Respondent has entered this business arena as Complainant's competitor.”)
Respondent is a domain name aggregator, and accordingly the requisite knowledge of Complainant's mark may be implied from his willful blindness to that mark or the marks of others. Unlike some aggregators,7 Respondent apparently had no procedures in place to vet newly acquired domain names to avoid interfering with third party rights. It certainly discloses none to the Panel. When Respondent registered the disputed domain name Complainant's mark was registered with the national authority in Respondent's home country, and thus review procedures utilized by most aggregators would probably have flagged it. If Respondent really was unaware of Complainant's mark it was likely due to willful blindness.
All Respondent offers in reply is its self-serving belief in first-come, first-served in respect to “generic” domain names, a principle which in itself and without qualification is simply not in accordance with Policy precedent applicable where such “generic” domain names correspond with trademarks. In the circumstances of this proceeding Complainant has carried its burden of proof under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy as well.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <myrisk.com> be transferred to Complainant.
Richard G. Lyon
Date: August 19, 2008
1 The Panel addressed this matter in a procedural order, determining that the deficiency was based on less than clear registrar information and that in any event Respondent had waived any objection to such defect.
2 The Policy and the Rules allow each party one pleading, and exceptions to this are rare and are permitted only in exceptional circumstances. Nothing is exceptional in this proceeding. The Response contains no factual material or argument that Complainant should not reasonably have anticipated.
3 E.g., Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409; James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391; Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber's Mackinac Island Florist, WIPO Case No. D2001-0653. The first two of these cases involved unregistered marks, the third a mark registered only with a state of the United States. All were “generic” or “descriptive” marks.
4 Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2007-1189.
5 Respondent cannot escape a finding of knowledge of Complainant by claiming, as it does, that links were "auto-generated." Respondent is charged with the acts of its agents and the computer programs they or it uses.
6 For example, the phrase my risk would appear to apply equally as aptly to gaming, an industry far more commonly found on the Internet than insurance, and far more profitable.
7 E.g., Compare Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (Listing “good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others” as one factor to be considered in evaluating a domain name seller's conduct under Section 4(a)(iii) of the Policy), with Mobile Communication Service Inc. v. Webreg, RN, n4 supra (“Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”).