WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Torus Insurance Holdings Limited v. Essential Planet / DomainsByProxy.com
Case No. D2011-1769
1. The Parties
Complainant is Torus Insurance Holdings Limited of Hamilton, Bermuda, Overseas territory of the United Kingdom of Great Britain and Northern Ireland, represented by Graham Watt & Co LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Essential Planet of North Palm Beach, Florida, United States of America / DomainsByProxy.com of Scottsdale, Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <torusamerica.com>, <torusasia.com>, <toruseurope.com>, <torusglobal.com> and <torusinternational.com> (herein, each a “Disputed Domain Name”, and collectively, “Disputed Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2011. On October 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On October 18, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2011.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on November 22, 2011. 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
Complainant owns and uses the TORUS trademark in various formats in association with insurance services (the “TORUS Mark”) in at least the following jurisdictions:
European Community: Community Trade Mark registration no. 6847495 (TORUS INSURANCE and Dev.) registered December 18, 2008; no. 6529648 (TORUS INSURANCE) registered November 21, 2008; and no. 8311474 (TORUS) registered January 21, 2010, each registration in international class 36 for: “Insurance; provision of insurance services; provision of insurance underwriting and reinsurance and assurance services; insurance advice; administration of insurance business; arranging insurance; brokerage of insurance; consultancy services relating to insurance; insurance claim assessments; indemnity services; insurance underwriting; insurance risk assessment and management services; processing of insurance claims; administration of insurance claims; assessment, processing adjustment and settlement of insurance claims; loss control services; insurance, reinsurance and assurance brokerage”.
United States: Trademark registration no. 3906401 (TORUS) registered January 18, 2011, in association with: “Business risk assessment and management; Provision of insurance services, namely, the provision of insurance underwriting, namely, engineering-intensive property and risk insurance, in the fields of offshore and onshore energy, power and utility, chemical, high-tech, construction, property, casualty, specialty, medical, professional, aviation, environmental, credit surety, personal injury, automobile, accident, health, travel, management, medical malpractice, director and officer liability, professional liability / indemnity, marine, workers' compensation, political risk, kidnapping and ransom, errors and omissions, specie, fine art and pharmaceutical insurance; reinsurance underwriting services; guarantee assurance underwriting services; insurance consultation; insurance administration of insurance business; brokerage of insurance; consultancy services relating to insurance; insurance claims assessments; appraisals for insurance claims of real and personal property; insurance underwriting in the field of indemnity insurance; financial insurance risk assessment and management services; processing of insurance claims; administration of insurance claims; assessment, processing adjustment and settlement of insurance claims; insurance services in the nature of loss control management for others; insurance, reinsurance and assurance brokerage”.
Respondent registered the Disputed Domain Names on January 16, 2011.
5. Parties’ Contentions
Complainant contends (in accordance with paragraph 4(a) of the Policy) that each Disputed Domain Name is confusingly similar with the TORUS Mark in which it has rights; that Respondent has no rights or legitimate interests in any Disputed Domain Name; and that Respondent registered and uses each Disputed Domain Name in bad faith.
Respondent did not reply to the Complaint and is in default.
6. Discussion and Findings
One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Since Respondent has not submitted any evidence, the Panel will render its decision on the basis of the uncontroverted evidence supplied by Complainant.
A. Identical or Confusingly Similar
Complainant contends that it has rights in the TORUS Mark and that each Disputed Domain Name is confusingly similar thereto.
The Panel accepts the TORUS Mark European Community and United States registrations (see above Section 4) as uncontroverted, convincing and supported by the evidence, and the Panel concludes that Complainant has rights in the TORUS Mark.
Complainant contends that each Disputed Domain Name includes the distinctive element of the TORUS Mark, i.e. “torus”. The Panel notes that the only addition to that distinctive element in each Disputed Domain Name is a generic geographical term – “asia”, “america”, “international”, “global” and “europe”. The Panel considers that such generic-like addition is insufficient to add any distinctiveness, and so concludes that there is confusing similarity between each Disputed Domain Name and the TORUS Mark.
The Panel concludes that Complainant has met the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. In particular, Complainant contends that: there is no evidence of Respondent’s use, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding thereto in connection with a bona fide offering of goods or services; that Respondent is not commonly known by any Disputed Domain Name; that Respondent has acquired no trademark or service mark rights thereto; that Respondent is, “… making no legitimate non-commercial or fair use of any Disputed Domain Name, without intent for commercial gain [to] misleadingly to divert consumers or to tarnish…” the TORUS Mark; and that all Disputed Domain Names resolve to “… generic search engines” which are (as contended) diversions.
Respondent has provided no arguments or evidence of rights or legitimate interests to counter Complainant’s preceding contentions. By virtue of the aforedescribed rights of Complainant in the TORUS Mark and the fact that each of its TORUS Mark Community Trade Mark Registrations predates Respondent’s registration of the Disputed Domain Names, and that its TORUS Mark United States registration date nearly coincides with Respondent’s registration of the Disputed Domain Names (and that the corresponding United States application had been pending publicly for several years earlier, see above Section 4); Complainant convincingly argues that Respondent has no rights to or legitimate interests in any Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, regarding the circumstances in which Respondent may demonstrate rights or legitimate interests in any Disputed Domain Name, likely do not exist.
The Panel concludes that Complainant has met the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and used each Disputed Domain Name in bad faith for the contended reasons described in above Section B, first paragraph – that there is no evidence of Respondent’s use, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding thereto in connection with a bona fide offering of goods or services; that Respondent is not commonly known by any Disputed Domain Name; that Respondent has acquired no trademark or service mark rights thereto; that Respondent is, “… making no legitimate noncommercial or fair use of any Disputed Domain Name, without intent for commercial gain [to] misleadingly to divert consumers or to tarnish…” the TORUS Mark; and that all Disputed Domain Names resolve to “… generic search engines”, which are (as contended) diversions. Based on its contentions, Complainant concludes that the Disputed Domain Names were registered by Respondent primarily for the purpose of disrupting the business of Complainant; and that Respondent intentionally attempted to attract for commercial gain, Internet users to its (“generic search engines”) websites, by creating a likelihood of confusion with Complainant’s TORUS Mark as to source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites pursuant to paragraph 4(b)(iv) of the Policy.
The Panel accepts the above contentions as uncontroverted, convincing and supported by the evidence.
The Panel concludes that Complainant has met the third requirement of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <torusamerica.com>, <torusasia.com>, <toruseurope.com>, <torusglobal.com> and <torusinternational.com> be transferred to Complainant.
Mark Ming-Jen Yang
Dated: November 23, 2011