Designer Skin LLC v. S & L Vitamins, Inc., et al.
Travel Insured International, Inc. v. International Medical Group, Inc.
Claim No. FA0508000545210 (Nat. Arb. Forum, Oct. 11, 2005)
In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ( "UDRP"), the Panel denied Complainant Travel Insured International's request that its competitor, Respondent I Travel Insured Inc., be compelled to stop using its itravelinsured.com domain name. Respondent held a legitimate interest in this domain mandating denial of such relief because it both owned the trademark registration for I Travel Insured, and was operating a business under that name. By a two to one margin, the Panel also determined that Complainant had engaged in reverse domain name hijacking by pursuing this proceeding. The Panel reached this result despite the fact that Complainant held a trademark registration in Travel Insured International, operated a web site at the domain travelinsured.com and had commenced a proceeding to cancel Respondent's trademark registration on the grounds that it was confusingly similar to its own.
Complainant and Respondent are competitors in the travel insurance industry. Complainant Travel Insured International offers its products for sale at a web site it operates at travel insured.com, which domain it registered in 1997. Complainant also owns the federal trademark in the mark "Travel Insured International," which mark it first used in commerce in 1994.
Respondent I Travel Insured Inc. offers its products for sale at a web site it operates at itravelinsured.com, which domain it first registered in 2000. Respondent owns a federal trademark registration in the mark "I Travel Insured," which mark it first used in commerce in 2000. According to Respondent, it has done business under the name I Travel Insured continuously since its inception in 2000. Prior to 2004, Respondent's name was Global Marketing Connections Inc.
A complainant cannot prevail in a UDRP proceeding if the respondent has a "legitimate interest" in the domain name in dispute. Under the UDRP, a respondent can have such a legitimate interest if, among other things:
Finding Respondent had a "legitimate interest" in the domain, the Panel denied Complainant's application for relief. Such "legitimate interest" existed because I Travel Insured Inc. had a registered trademark in the I Travel Insured mark, which mark it used in its domain name and in the operation of a legitimate business.
In reaching this result, the Panel rejected Complainant's argument that Respondent's use was not legitimate because Respondent's mark infringed, and was confusingly similar to, Complainant's Travel Insured International mark. Complainant had in fact commenced a proceeding to cancel I Travel Insured's trademark registration. The existence of such a proceeding was "irrelevant" to the Panel, which reconfirmed that the UDRP was not meant to be used to resolve "complex issues of trademark priority, trademark interference or unfair competition." Said the Panel:
A majority of the Panel found that Complainant, by pursuing a UDRP proceeding notwithstanding its knowledge that Respondent held a registered trademark in the domain name at issue, had engaged in Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in the UDRP as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name." To establish such "bad faith," a respondent must show "the launching of an unjustifiable Complaint with malice aforethought" or "the pursuit of a Complaint after the Complainant knew it would be insupportable." Smart Design LLC v. Carolyn Hughes, D2000 - 0993 (WIPO, Oct. 18, 2000).
The majority held such was the case here because Complainant filed, and pursued, this UDRP proceeding despite its knowledge of Respondent's trademark registration. Said the Panel: