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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CNA Financial Corporation & Allstate Insurance Company v. Insurance Services Plus, Inc.
Case No. D2000-0955
CNA Financial Corporation & Allstate Insurance Company v. Paul Erik Olafsson
Case No. D2000-0956
CNA Financial Corporation & Allstate Insurance Company v. Erik Paul Olafsson
Case No. D2000-0957
1. The Parties
Complainants have brought three separate complaints which they seek to consolidate. Complainant CNA Financial Corporation ("CNA"), is a Delaware Corporation with its principal place of business located at 333 S. Wacker Drive, Chicago, IL 60685, USA. Complainant Allstate Insurance Company ("Allstate"), is an Illinois insurance company located at 3075 Sanders Road, Northbrook, IL 60062, USA. Respondent Insurance Services Plus, Inc. is a Maryland Corporation located at 11207 Minstrel Tune Drive, Germantown, MD 20876, USA. The individual Respondents in the other cases are the same person, Paul Erik Olafsson located at 11207 Minstrel Tune Drive, Germantown, MD 20876, USA.
2. The Domain Names and Registrar
This dispute concerns five domain names: <cnapersonalinsurance.com>, <cnapersonlins.com>, <cnapi.com>, <cnapersonal.com> and <cnapersonallines.com> ("Domain Names"). Network Solutions, Inc. is the registrar.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaints by email on August 4, 2000 and in hard copy on August 7, 2000. The Center verified that the complaints satisfied the formal requirements of the ICANN Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainants made the required payment to the Center. The formal date of the commencement of the administrative proceedings is October 2, 2000.
Issuance of Complaint
The complaint indicates that WHOIS records for the Domain Names list Respondents Insurance Services Plus, Inc and Erik Paul Olafsson at the following address: 11207 Minstrel Tune Drive, Germantown, MD 20876, (USA) and Respondent Paul Erik Olafsson at the following address: 25901 Frederick Road, Clarksburg, MD 20871, USA. Complainants in Case No. D2000-0955 sent a copy of the complaint by email to the following address: email@example.com. Complainants in Case No. D2000-0956 and Case No. D2000-0957 sent a copy of the complaints by email to the following address: firstname.lastname@example.org. Erik Olafsson is the Administrative and Billing contact for all of the Domain Names. His email is email@example.com.
The Complainants seek to consolidate all three complaints in one action pursuant to paragraph 4(f) of the Policy and paragraph 10(e) of the Rules. The complaints are essentially identical except for different Respondents. Respondents are an insurance agency and an individual who is the owner and president of that agency. The Panel concludes that these three complaints should be consolidated before a single Administrative Panel.
Confirmation of Registration Details
On August 16, 2000 the Center transmitted, via email, to Network Solutions, Inc. requests for registrar verification in connection with this case. On August 21, 2000, Network Solutions, Inc. transmitted by email to the Center their verification responses confirming the registrations in paragraph 2 (above) and indicating that the Administrative and Billing contact is Erik Olafsson.
Notification of Respondents
On October 2, 2000, the Center transmitted to firstname.lastname@example.org, Notifications of Complaint and Commencement of the Administrative Proceeding. The Center advised that responses were due by October 21, 2000.
Hard copies of the said documents were sent by courier.
Filing of Response
On October 21, 2000, the Respondents filed responses via email. On October 25, 2000, they sent one original and four hard copies of the responses.
Constitution of Administrative Panel
On December 5, 2000, the Center notified the parties via email that Mr. David Wagoner had been appointed as the panelist in this proceeding.
Compliance with the formalities of the Policy and the Rules
Upon review of the files, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondents were given adequate notice of this proceeding, and that Respondents have been accorded due process.
4. Factual Background
CNA owns seventeen federal service mark registrations consisting of or containing the CNA mark. Annex 3 to the complaints is a printout from the US Patent and Trademark Office trademark database showing the details of each of the seventeen registrations, including the identification of services for each registered mark. Almost all of the registrations cover a broad array of insurance underwriting services, including personal insurance lines. The first use of the CNA mark for insurance was in 1964.
On October 1, 1999, Allstate purchased the personal lines business of CNA’s insurance unit for about $1.2 billion. Allstate established a new unit known as CNA Personal Insurance to sell personal lines insurance under the CNA brand name.
Respondents are a local Allstate insurance agency and its president and owner. During the period of June through November 1999, Respondents registered with NSI the five domain names set out in section 2 above, all beginning with CNA. Ownership of these domain names is the subject matter of this dispute.
5. Parties’ Contentions
Complainants allege that the Domain Names are confusingly similar to CNA’s marks because they incorporate the entire CNA name, that merely adding descriptive words to a well-known trademark does not eliminate confusing similarity and that due to the strength of CNA’s mark, use of the CNA name in insurance related domain names will undoubtedly lead to confusion. Complainants contend that Respondents have no rights or legitimate interests in the CNA mark, that CNA is not the Respondents’ personal or business name and that Respondents are not incorporated under that name or doing business under the name CNA. Complainants allege that the USPTO has issued an initial Office Action, refusing registration of the mark "C.N.A. Personal Insurance" to the individual respondent on the ground that the mark is likely to be confused with CNA’s current registrations. Complainants allege the Domain Names were registered and are being used in bad faith by Respondents, that the use of these Domain Names has been a token use and not for any legitimate business purposes, that one of the Domain Names led to a website containing the message "this website is for sale," that the Respondents offered to sell the Domain Names to Allstate for $800,000 and that in any event the circumstances show passive holding in bad faith.
B. The ResponseRespondents vigorously object to the Complainants’ frequent inferences that the individual Respondents used fictitious names or aliases indicating that for the last 8 years Insurances Services Plus, Inc. had a neighborhood exclusive agency agreement with Allstate and Complainants were well aware of the identity of the agents’ principal and the relevant addresses. Respondents contend that the CNA Personal Insurance trademarks merely cover underwriting insurance services and therefore Complainants do not have trademarks similar or confusingly similar to the Domain Names. Respondents allege the letters CN & A, CNA or C.N.A. have been so often used in so many different trademarks and domain names that the significance of those letters has been diluted to near zero. Of the 24 live registered trademarks using the letters CNA or C.N.A., seven of them claim no connection with the insurance business, ranging from holding fixtures to market research services, jewelry, lighting electrical fixtures and audio visual products. Several of the domain names are linked to businesses selling insurances that are competitive to CNA Financial Corporation (the owner of the CNA marks that recite underwriting of insurance or insurance underwriting). Respondents note that the Trademark application remains pending with the United States Patent and Trademark Office. Respondents object to the Complainants’ attempts to bring in communications between counsel which were incidental to settlement negotiations between the parties. Respondents contend that their offer of the website for sale was in direct response to the obvious efforts of Allstate in combination with CNA to promote and support direct competition with Respondents’ exclusive Allstate Insurance Agency while controlling the pricing and commissions paid on its products and the products Complainants sell in competition.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainants must prove, with respect to each domain name in issue, each of the following:
(1) The domain name in issue is identical or confusingly similar to the Complainants’ trademarks and
(2) Respondents have no rights or legitimate interests in respect of the domain name, and
(3) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for purposes of Paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances which, if proved, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
A Identical or Confusingly Similar Domain Names
Complainants have proved that Respondents’ Domain Names are identical or confusingly similar to trademarks in which Complainants have rights.
(1) Each of the Domain Names begins with the letters CNA.
(2) The addition of descriptive words in the Domain Names to the well-known CNA trademarks does not eliminate confusing similarity.
(3) The CNA trademarks are broad enough to cover personal insurance services.
(4) Respondents sell CNA’s (Allstate’s) insurance through their insurance agency and the same channels of trade and purchasers may be involved.
(5) The USPTO has issued an initial Office action refusing registration of "C.N.A. Personal Insurance", on the ground that the mark is likely to be confused with CNA’s current registrations
(6) Confusing similarity depends on similarity of mark and terms, similarity of products and services, similarity of distribution channels, similarity of users, etc. Respondents have intentionally tried to benefit from all of these similarities.
The Panel concludes that the Respondents’ Domain Names are confusingly similar to trademarks in which Complainants have rights.
B. Respondents’ Rights or Legitimate Interests in the Domain Names
C. Domain Names Registered and Used in Bad Faith
While Complainants have satisfied the first requirement, the same cannot be said of the second and third requirements. As to both some significant factual issues remain, the resolution of which is beyond the scope of the disputes intended to be resolved under the Policy.
This case does not involve the classic cybersquatter who registers a series of domain names unrelated to its business and confusingly similar to famous trademarks with the intent of selling them to the trademark owner at an exorbitant price. Here, arguably, a long standing local insurance agency registered domain names to assist in the sale of insurance underwritten by the owner of the trademarks.
It is apparent that there is a larger dispute between the Complainants and the Respondents relating to the agency agreement. The Agreement has not been put in the record, nor has the nature of the dispute been defined. Moreover, settlement discussions are mentioned, but not delineated.
Complainants contend that Respondents have offered to sell them the Domain Names for $800,000. Respondents claim that these negotiations are confidential under the law, without indicating what law is governing. Having asserted privilege, Respondents nevertheless state that their offer of $800,000 included the sale of the agency as well as Domain Names.
This raises issues with respect to Respondents’ intention to sell the agency, if this be the case. When did these discussions begin and do they have a bearing on Respondents’ intent?
Complainants have the burden of proving that Respondents have no rights or legitimate interests in the Domain Names and that the Domain Names were both registered and used in bad faith. Resolution of these issues requires a detailed analysis of the underlying facts that go to Respondents’ intent.
Although Respondents admit that they have made limited use of the Domain Names, their explanation is that they were intimidated by the coercion of Complainants. This presents fact intensive issues not developed in this record.
Respondents contend that they have rights or legitimate interests in the Domain Names in connection with their bona fide efforts to sell Complainants’ insurance. Although not raised by the parties, this contention could also involve an issue of fair use under the trademark laws which is an issue for the courts and not this Panel.
A critical-fact issue is whether the Domain Names were registered by Respondents in response to the announcement or closing of the sale of CNA’s Personal Lines Insurance Unit to Allstate, as Complainants contend. Respondents deny this contention, making it impossible for the Panel to resolve on this record.
A related factual issue is whether the registration occurred prior to the time a dispute had arisen between the parties concerning the agency agreement or after the dispute had surfaced and in response to the dispute itself. The record here does not address this point.
Complainants raise the initial decision of the USPTO with respect to Respondents’ application for the "C.N.A. Personal Insurance" mark, holding that there is likely to be confusion with CNA’s current registration. Respondents contend that this application proceeding is still in process. The ultimate resolution of that proceeding could have a bearing on the issues here.
The Panel is of the opinion that resolution of the issues before the Panel involves factual disputes, questions of credibility of witnesses, and matters of trademark law, as well as other legal issues, that are beyond the scope of the disputes intended to be resolved under the Policy. These matters go considerably beyond the scope of issues that can be fairly resolved on a document-only basis and within the 14 day decision-making deadline.
Although the Panel has the power to order the parties to make supplemental filings, the Panel is of the view that this power should be exercised sparingly. A series of supplemental filings would be inconsistent with the spirit of the Policy which is to obtain a judgment concerning transfer of Domain Names to the trademark owner on a cost-effective and expeditious basis, applying limited and defined criteria. Here it is probable that supplemental filings would not obviate the need to hear witnesses and determine credibility.
The Panel concludes that on the record here Complainants have not sustained their burden of proof with respect to paragraph 4(a)(ii), that Respondents have no rights or legitimate interests in the Domain Names, and paragraph 4(a)(iii), that Respondents registered and used the Domain Names in bad faith. Compare Case No. D2000-0006.
In light of the foregoing, the Panel decides that;
(1) The Domain Names registered by Respondents and at issue here are confusingly similar to Complainants marks,
(2) Complainants have not met their burden of proof under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
The Panel’s decision is made without prejudice to the Complainants to reassert their claims against Respondents based on a different record developed after the conclusion of proceedings in court, or otherwise. This decision is limited to the conclusion that on this record (which the panel is mindful may develop after the conclusion of proceedings in court or otherwise) the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy.
Accordingly the Panel concludes that the Registration of the 5 Domain Names set forth in paragraph 2 of this Decision not be transferred to Complainants.
Dated: December 15, 2000