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Insurance.Pro Saved In UDRP

Posted on the 05 February 2014 by Worldwide @thedomains

Christopher Copeland (“Complainant”), just lost it bid to grab the domain name Insurance.Pro from Michael Silver who was represented by John Berryhil

Here are the relevant facts and findings by the three member panel:

Complainant asserts the following:

  1. Policy ¶ 4(a)(i)
    1. Complainant owns rights in the INSURANCE.PRO mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,785,018 registered November 18, 2003).
    2. The <> domain name is identical to Complainant’s INSURANCE.PRO mark.
  2. Policy ¶ 4(a)(ii)
    1. Respondent is not commonly known as <> and Complainant has not authorized Respondent to use its INSURANCE.PRO mark in a domain name.
    2. The disputed domain name redirects to the <> domain name and resolves to a website that purports to offer “PREMIUM .PROFESSIONAL DOMAINNAMES FOR SALE OR LEASE.” The website lists the <> domain name as available for purchase, among others.  A reverse WHOIS printout identifies Respondent as the owner of the <> domain name. 
  3. Respondent is not licensed as an insurance professional in Respondent’s home state of Oklahoma.
  4. Policy ¶ 4(a)(iii)
    1. Respondent purchased the disputed domain name with the primary intent of selling it for an amount exceeding Respondent’s out-of-pocket expenses.
    2. Respondent is a serial cybersquatter with a pattern of bad faith domain name registrations. 
    3. Respondent registered the <> domain name with constructive knowledge of Complainant’s rights in the mark.
  5. Respondent registered the <> domain name on December 6, 2013.

Respondent asserts the following:

  1. The instant dispute constitutes a trademark dispute outside the scope of the UDRP, and the parties should resolve the matter in court. Complainant’s registration of the INSURANCE.PRO mark constituted “front-running:” the practice of registering a mark that includes a generic top-level domain (“gTLD”) that has not yet been officially launched by ICANN.  Moreover, there is evidence that Complainant committed forgery/perjury in the documents it sent to the USPTO to support the renewal of its INSURANCE.PRO trademark in 2013. Further, there is evidence that Complainant abandoned its INSURANCE.PRO mark and is not using the mark in connection with any insurance products or services.  Therefore, substantial, non-frivolous questions exist as to the validity of Complainant’s INSURANCE.PRO mark, and the Panel should deny Complainant’s request for the transfer of the <> domain name.
  1. Policy ¶ 4(a)(i)
    1. Under the circumstances discussed in the preceding paragraph, Complainant’s registration of its mark with the USPTO is insufficient to conclusively establish Complainant’s rights in the mark.

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