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.…
