WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Universal Assistance S.A. v. Domain Asset Holdings, LLC

Case No. D2012-2547

1. The Parties

The Complainant is Universal Assistance S.A. of Buenos Aires, Argentina, represented by Palacios de Torres y Asociados, Argentina.

The Respondent is Domain Asset Holdings, LLC of Potomac, Maryland, United States of America, represented by Erika L. Hengst, United States of America ("USA").

2. The Domain Name and Registrar

The disputed domain name <universalassistance.com> ("Disputed Domain Name") is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2012. On January 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact for the Disputed Domain Name. In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed amended Complaints on January 11 and January 17, 2013.

The Center verified that the Complaint, together with the two amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on January 18, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 7, 2013. The Response was filed with the Center on February 1, 2013.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 8, 2013. 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 paragraph 7 of the Rules.

On February 19, 2013, the Panel issued an Administrative Panel Procedural Order requesting that the Complaint be signed by the Complainant's authorised representative as required under paragraph 3(b)(xiv) of the Rules, and requesting that the Complainant provide evidence to indicate that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name. The Complainant filed a response to the Administrative Panel Procedural Order on March 5, 2013, and the Respondent followed with a Supplementary Response on March 16, 2013.

4. Factual Background

The Complainant is a company incorporated in Argentina in 1980, providing travel health insurance in and outside Argentina. According to the Complainant, the company is operational in 150 countries and provides insurance to over 10 million people a year. It has trade mark registrations in Brazil, Argentina, Paraguay, Nicaragua and Colombia, with the oldest registration dating back to 1994. The Complainant registered the domain name <universal-assistance.com> in 2004.

The Respondent is a company based in the USA and is in the business of owning, developing and selling domain names. It registered the Disputed Domain Name on December 9, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant's contentions can be summarised as follows:

(a) The Disputed Domain Name is identical or confusingly similar to the Complainant's UNIVERSAL ASSISTANCE trade mark, in which the Complainant has rights:

(i) the Complainant is a registered owner of the UNIVERSAL ASSISTANCE trade mark in Argentina for all services included under international class 36 and 41 since 1994 and 2011 respectively;

(ii) the Complainant is a registered owner of the UNIVERSAL ASSISTANCE trade mark in Paraguay under class 39 and 44, both having been valid since 1999 and 1997 respectively;

(iii) the Complainant is a registered owner of the UNIVERSAL ASSISTANCE trade mark in Nicaragua under international class 44 since 2009;

(iv) the Complainant is a registered owner of the UNIVERSAL ASSISTANCE trade mark in Colombia under class 42 since 1997; and

(v) the Complainant is a registered owner of CAR ASSISTANCE trade mark in Brazil under class 38 and 40 since 1997.

(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:

(i) the Respondent does not own any trade marks for "Universal Assistance", is not commonly known by the name "Universal Assistance" and has not done business under that name;

(ii) the Complainant has not authorised the Respondent to own or use any domain name incorporating the UNIVERSAL ASSISTANCE trade mark;

(iii) the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services or for legitimate fair use purposes. The website to which the Disputed Domain Name resolves is linked to another website called “www.mikemann.com”, which sells an e-book written by the Respondent about "making millions" and contains advertising links to third-party websites, none of which are sponsored by or affiliated with the Complainant. The website to which the Disputed Domain Name resolves contains a notice on the top and bottom of the page advertising that the Disputed Domain Name is for sale.

(i) the Respondent is in the business of owning, developing and selling domain names. The Respondent registered the Disputed Domain Name solely for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs. The Respondent has offered to sell the Disputed Domain Name for USD 50,000; and

(ii) the Respondent has engaged in a pattern of registering domain names that target well-known businesses in order to prevent the owner of a trade mark or service mark from reflecting the mark in a corresponding domain name.

B. Respondent

(a) The Disputed Domain Name is identical or confusingly similar to the Complainant's UNIVERSAL ASSISTANCE trade mark, in which the Complainant has rights:

The Respondent concedes that the Disputed Domain Name is identical to the Complainant's mark. However, the Respondent argues that the Complainant's mark is not capable of protection in the first place. "Universal Assistance" is a generic or descriptive term, which has not been registered in the U.S.A: and should not have been registered in Paraguay, Argentina, Nicaragua or Brazil.

(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:

The Respondent concedes that it is not commonly known by the Disputed Domain Name. Notwithstanding this, the Respondent asserts that it has a legitimate interest in the Disputed Domain Name, which features a unique landing page advertising the Respondent's various companies, charities, other domain names that may be for sale and a book that was written by the Respondent's founder. As such, advertising its own assets, companies and services should be deemed a bone fide offering of goods and services under paragraph 4(c)(i) of the Policy.

Respondent denies that registering domain names with the intent of selling them amounts to bad faith. Every domain name it holds might, at some point in time, be used in the Respondent's next business venture. Until then, such a domain name could be sold to an inquiring third party. It was the Complainant that reached out to the Respondent to purchase the Disputed Domain Name, and this did not amount to bad faith under paragraph 4(b)(i) of the Policy.

Further, the Complainant completely fails to provide evidence that would support a finding that the Respondent purchased the Disputed Domain Name for the purpose of selling it to the Complainant. The fact that it assigned a purchase price to the Disputed Domain Name is irrelevant in analyzing bad faith. If an owner legitimately uses a domain name, it can also sell that domain name for whatever price it wants. The Respondent has shown a clear legitimate use of its rights in the Disputed Domain Name.

When the Respondent acquired the Disputed Domain Name in 2007, it did not have any knowledge that there was a service mark or trade mark holder for the term "Universal Assistance". According to the Respondent, the registrations all appear to post-date the Respondent's registration of the Disputed Domain Name, although the Respondent admits that they may have misinterpreted the trade mark registrations due to a language barrier.

Since "Universal Assistance" is a generic term, the Respondent claims that it could not have been expected to know that anyone, anywhere, could get protection of the term. In addition, the Complainant has not asserted that it maintains an international trade mark that could easily be discovered by reasonable efforts, or that the Respondent should have or could have known of the registrations in South America at the time it registered the Disputed Domain Name. Despite present day search results on various search engines showing the Complainant's UNIVERSAL ASSISTANCE trade mark, this is not evidence of the existence of the Complainant's mark in 2007. The Complainant has produced no evidence that it conducts business in the U.S.A. or that it is a well-known trade name any place in the world.

Consequently, the Respondent does not think that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

(d) Reverse Domain Name Hijacking

The Respondent also contends that the Complainant is guilty of Reverse Domain Name Hijacking by bringing this dispute. The Respondent submits that the Complainant has failed to submit specific arguments directed at the essential elements under the Policy and the Complaint should be denied.

(e) Doctrine of Laches

Additionally, the Respondent argues that the Complaint should be barred under the doctrine of laches on the basis that the Complainant waited sixteen years after first obtaining a registration of a service mark in 1997 to bring its Complaint. The Respondent also notes that it has been the owner of the Disputed Domain Name for six years and the Complainant should not now be allowed to recover the Disputed Domain Name.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

Despite the Respondent's contention that "Universal Assistance" is a generic or descriptive term and cannot be registered, the Panel finds that the Complainant has rights in respect of the UNIVERSAL ASSISTANCE trade mark on the basis of its various registrations in South America, with the oldest registration dating back to 1994.

The Complainant’s holding of a registered mark is sufficient without more to establish rights under the Policy, a respondent’s claim that registration should not have been granted or should be revoked is a matter for the courts or trade mark authority of the relevant country. See Southwestern Association for Indian Arts, Inc. v. Indian Art of America and A. Mata, WIPO Case No. D2009-1774.

Nonetheless, even if the Complainant was found not to have a valid trade mark registration for the UNIVERSAL ASSISTANCE trade mark, it is well-established that marks which may be generic or descriptive, but have gained a certain distinctiveness through use, should be considered a trade mark or service mark in which a Complainant has rights for purposes of the Policy. (Swiss Casinos Brands AG v. Protected Domain Reg Ltd / Linh Wang, WIPO Case No. D2012-1352). The Panel accepts that the Complainant, by providing travel insurance services in numerous countries in South America under its UNIVERSAL ASSISTANCE trade mark since 1980, has acquired distinctiveness of its trade mark through use.

As the Respondent concedes, the Disputed Domain Name is identical to the Complainant's UNIVERSAL ASSISTANCE trade mark. The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the UNIVERSAL ASSISTANCE trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant's UNIVERSAL ASSISTANCE trade mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of a "Universal Assistance" trade mark anywhere in the world nor any evidence that it has become commonly known by the Disputed Domain Name (paragraph 4 (c)(ii) of the Policy). Accordingly, the Panel is of the view that a prima facie case is established by the Complainant and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name.

In its Supplementary Response, the Respondent produced a number of WhoIs records to illustrate that the hyperlinks on the website of the Disputed Domain Name belong to the Respondent, and that the Disputed Domain Name is used to advertise the Respondent's goods and services. In the Panel’s opinion, the evidence provided by the Respondent is of low probative value and therefore insufficient to overcome a prima facie finding of no rights or legitimate interests in the spirit of paragraph 4(c)(i) of the Policy. Furthermore, this appears to be a mere display of hyperlinks, which although may lead to websites that are owned by the Respondent, establish no connection to the Disputed Domain Name or a name corresponding to the Disputed Domain Name such that would support a finding of a right or legitimate interest in the Disputed Domain Name. The purported use of the website to which the Disputed Domain Name directs fails to show any monetary or intellectual investment that would support the Respondent's submission that the website was used for a bone fide offering of goods or services. As a consequence, the Panel does not find that based on the present record the Respondent has satisfied paragraph 4(c)(i) of the Policy.

It is also clear, in the Panel’s opinion, that no legitimate noncommercial or fair use is being made of the Disputed Domain Name without intent for commercial gain (paragraph 4 (c)(iii) of the Policy). As stated by the Respondent themselves, the Respondent’s business is the registration and sale of domain names which by definition must signify that there is commercial gain involved.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, a Respondent shall be considered to have registered and used a domain name in bad faith if:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003). The overriding objective of the Policy is "to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trade mark of another" (Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

In this case there is a notice on the top and bottom of the screen advertising that the Disputed Domain Name is for sale. In addition, the Respondent admits that it offered the Disputed Domain Name to the Complainant for USD 50,000. As addressed in the preceding heading, the hyperlinks advertised on website of the Disputed Domain Name are not enough, in the view of the Panel, to amount to a bone fide use of the Disputed Domain Name and should be disregarded. The evidence taken as a whole, suggests that the Respondent did not register the Disputed Domain Name other than to offer it for sale (Training Channel, SA v, Domain Asset Holdings, WIPO Case No. D2011-0875). The fact that the Complainant was the first to reach out to the Respondent to purchase the Disputed Domain Name is of no relevance.

Furthermore, any doubt in the minds of the Panel as to the motives of the Respondent in registering the Disputed Domain Name is dispelled by the fact that the Complainant puts forward evidence of the Respondent's pattern of registering domain names that involve trade marks, companies or businesses of other well-known third parties. The Respondent was involved in several disputed domain name disputes including the following: Training Channel, S.A v. Domain Asset Holdings, WIPO Case No. D2011-0875; Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC, WIPO Case No. D2011-2137 ; and Facebook, Inc. v. Domain Asset Holdings, WIPO Case No. D2011-0516.

Previous UDRP panels have found against the Respondent for all of the above-listed domains for reasons similar to those already discussed by this Panel.

The Panel has taken due note of all of the Respondent’s contentions; however, the Panel does not find sufficient evidence on the provided record to establish that the Respondent did not register and/or use the Disputed Domain Name other than in bad faith. Given the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name.

D. Doctrine of Laches

The Panel notes that the Respondent denies that the Complainant has a valid trade mark registration since 1997, yet seeks to rely on this fact to invoke the doctrine of laches. Accordingly, the Panel does not find that the doctrine of laches apply on this ground.

In any event, it is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy (Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447). The non-applicability of the defense of laches in UDRP proceedings has been recognized by UDRP panels over many years in a large body of cases. TMK A/S v. woosan, James Motors, WIPO Case No. D2012-2073. Even if in certain circumstances a mark owner’s delay in enforcing its rights under the Policy may lend support to defenses under paragraph 4(c)(i) and 4(c)(ii) of the Policy, in cases where a respondent’s use of a disputed domain name is strictly for related hyperlinks, in this Panel’s opinion such a defense would not apply (Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393).

As a consequence, the Panel denies that the Respondent can rely on the doctrine of laches.

E. Reverse Domain Name Hijacking

To establish reverse domain name hijacking, the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge (Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565). Neither circumstance has been shown here. As a result, the Panel is of the view that the Respondent has failed to establish a case of reverse domain name hijacking.

7. Decision

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 Name <universalassistance.com>, be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: April 2, 2013