Midland National Life Insurance Company brought this URDP on the domain name midlandinsurance.com which was owned by ItemWire / Edwin Sherman (and represented by Zak Muscovitch of The Muscovitch Law Firm.
Its a pretty interesting case which seemed to turn on that the domain holder actually owned a couple of hundred domains just like the at issue.
Trademark holder have tried on numerous occasions to use the number of domains registered by the domain holder against them asking panels to find consider large portfolio owners to some extent cyber-squatters using the numbers of registrations as “proof” however in this case it backfired against the trademark holder.
Also it seemed to greatly help the domain holder that the domain names were not simply parked but look liked insurance comparisons sites in essence a mini-site that although monetized like a Parked page, looked like a more traditional site
Here are the relevant facts and findings by the three member panel:
“Complainant Midland National Life Insurance Company has been in business for over 100 years and holds more than one million life insurance and annuity policies with assets exceeding $30 billion.”
“Midland National owns U.S. trademark registrations for its MIDLAND NATIONAL and MIDLAND NATIONAL LIFE marks and used the domain name registration mnlife.com for its site.
The domain name Midlandinsurance.com was registered on August 15, 2012
“It notes that Respondent’s former website at midlandinsurance.com displayed click-through links to the sites of Complainant’s competitors”
“omplainant indicates that Respondent changed the content of the disputed website sometime in September or early October 2012.
Today, according to Complainant, the Respondent’s midlandinsurance.com website purports to offer comparison shopping services for auto insurance in Midland, Texas.
When a user arrives at the Respondent’s site, the user is prompted to enter their zip code to obtain an insurance quote.
After entering one’s zip code, the user is redirected to a “local results” page containing click-through links to the homepages of various insurance companies. C
omplainant emphasizes that “[r]egardless of the zip code entered, the local results pages returned in response display click-through links to large U.S. insurance companies, not localized results.
Because there is no substantive content at the Website other than a homepage with a Zip Code entry box and results pages with click-through links, the Website is merely a pay-per-click site designed to appear otherwise and such use is not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii).”
With respect to the issue of “bad faith” registration and use, Complainant contends that, given that Complainant’s marks were registered over 80 years ago, Respondent undoubtedly “knew or should have known” of Complainant’s use of the MIDLAND NATIONAL and MIDLAND NATIONAL LIFE marks prior to the registration of the disputed domain name.
Respondent first takes aim at Complainant’s trademarks, noting that Complainant does not have rights in “Midland Insurance” and that the term “Midland” is commonly used as a trademark by dozens of companies for all manner of goods and services. Respondent indicates that there are at least 535 businesses in Midland, Texas alone that use the geographic descriptor “Midland” in their business name”.
“Respondent reports that it is the owner of over 200 websites and domain names that include a geographic location and an insurance related term and has never before been accused of cybersquatting”
“As related by Respondent, typically, a visitor to one of its sites will be asked to enter his/her zip code and then detailed insurance-related ads will be listed, with links to third party sites that offer insurance products within the geographic location of the zip code entered. The ads generated through its sites are not mere pay-per-click ads, Respondent contends. “Rather, they are provided through an agreement with Sure Hits, which provides content to web publishers….Furthermore, the advertisers that appear in the detailed insurance advertiser feed, are companies which have also retained Sure Hits to provide their ads to the public through context specific websites, such as the Respondents.”
Respondent next takes the panel through the chronology and history surrounding its acquisition of the disputed domain name. It points out that, long before this dispute, it registered the domain names odessacarinsurance.com and <midlandinsurance.com and then, shortly thereafter, developed sites about car insurance targeted specifically to users from Odessa, Texas and Midland, Texas, which are only 20 miles apart.
In mid-August, 2012, Respondent acquired at auction the expired registrations for the domain names <midlandinsurance.com and odessainsurance.com. Such acquisitions, Respondent explains, “fit perfectly with [its] established business model and previous holdings.”
“Thereafter, Respondent developed its standard Midland, Texas geo-targeted site for car insurance-related inquiries, although there was a brief gap of time between registration of the disputed domain name and the erection of the site, during which a webhosting company automatically associated a placeholder web page with the domain name. This web page was populated by pay-per-click sites.
“Respondent contends it has a legitimate interest in the disputed domain name “because it is a generic, descriptive term referring to `insurance’ in Midland.” Respondent also asserts that it has a well-established history of registering geographic + insurance domain names in connection with a genuine and expansive marketing business and that its activities qualify as a bona fide offering of goods and services under paragraph 4(c)(1) of the Policy.
“Respondent also argues that it “is clearly using the Domain Name not as a trademark, but rather in its commonly understood descriptive sense, and there is no intention to trade off of the goodwill and reputation of the Complainant.”
“Respondent maintains that the disputed domain name was not registered in bad faith as the evidence indicates that such registration was consistent with its well-established business practice. The domain name is not being used in bad faith, according to Respondent, because it is being used in connection with a site dedicated to providing car insurance quotes to residents of Midland, Texas; it never received a dime as a result of the webhost’s actions; and its use of the domain name “was perfectly acceptable” since it made use of the ordinary common meaning of “Midland Insurance,” that is, insurance for or relating to residents of Midland, Texas.
“Finally, Respondent accuses Complainant of reverse domain name hijacking. Respondent asserts that Complainant had knowledge of Respondent’s unassailable right or legitimate interest in the disputed domain name as it was well aware that Respondent had a network of similar geographic + insurance domain names and sites, yet failed to disclose such information to this Panel and proceeded to file its Complaint?.
The Panel finds that the disputed domain name is confusingly similar to trademarks in which Complainant has rights; that Respondent has rights or legitimate interests in the disputed domain name; and that the domain name was not registered and is not being used in bad faith”.
“The Panel concludes that Complainant has not sustained its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name”
“The Panel is persuaded that Respondent is using the domain name in connection with a bona fide offering of goods and services and is making a fair use of the domain name”.
“The evidence indicates that Respondent owns over 200 insurance-related domain names that incorporate a geographic location. Thus, its registration of <midlandinsurance.com> appears consistent with past business practices”.
” Moreover, the disputed domain name is used in connection with a site directed at residents of Midland, Texas, insofar as residents of Midland are directed to auto insurance companies that can offer policies within the State of Texas. The fact that Respondent is not located in Midland or that the local results page does not refer to insurance companies located in Midland does not render such use illegitimate. Indeed, the Panel finds that such use constitutes a fair use under the Policy”.
“While Complainant owns rights in the MIDLAND NATIONAL and MIDLAND NATIONAL LIFE marks, such rights do not preclude Respondent from using the term “Midland” in its domain name in connection with a site directed at residents of the city of Midland, Texas.
Registration and Use in Bad Faith
“The Panel further concludes that the disputed domain name was not registered and is not being used in bad faith. The Complainant’s reliance on Respondent’s alleged use of a privacy service and the fact that the disputed domain name fetched more at auction than some other domain name does not convince the Panel that the domain name was registered in bad faith. Nor does the fact that Respondent presumably earns income from its pay-per-click site”.
“Upon review of all the evidence, the Panel finds that Respondent’s registration of the disputed domain was merely part and parcel of its long-standing business practices and was not motivated by an attempt to trade on Complainant’s marks”.
Reverse Domain Name Hijacking
“The Panel declines to declare this a case of reverse domain name hijacking, concluding that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative proceeding under paragraph 15(e) of the Rules”.