International Health Insurance danmark forsikringsaktieselskab v. Cortes jr. Fernando

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL

DECISION

International Health Insurance danmark forsikringsaktieselskab v. Cortes jr. Fernando

Case No. D2003-0091

1. The Parties

The Complainant is International Health Insurance danmark forsikringsaktieselskab, of København, Denmark, represented by Johan Schlüter Lawfirm, Denmark.

The Respondent is Cortes jr. Fernando, Cortes Underwriters International, Inc., of Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ihi-dk.com> (hereinafter the "Domain Name") is registered with TierraNet d/b/a DomainDiscover.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 7, 2003. On February 12, 2003, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the Domain Name at issue. On February 13, 2003, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2003. Upon Respondent’s requests, the Center granted Respondent two subsequent extensions of time until March 28, 2003, to file a Response. In view of Complainant’s email of March 24, 2003, refusing any further extension, the Center declared that no further extension would be granted. Nevertheless, on March 28, 2003, Respondent filed a further request for extension until April 1, 2003. Upon Complainant’s request, on April 4, 2003, the Center suspended the proceedings until May 4, 2003. The suspension was then extended until August 18, 2003.

On August 18, 2003, Complainant sent an email to the Center stating that "we do not request a further suspension of the proceedings". Due to a misinterpretation of this email, the Center issued a Notification of Termination on August 21, 2003. However, as brought to the Center’s attention on August 25, 2003, Complainant’s intention was not to terminate the procedure but to go on with the proceedings after the suspension expired. Therefore, on August 25, 2003, the Center revoked the Notification of Termination and reinstituted the proceedings as of August 25, 2003. On August 26, 2003, Respondent asked the Center to be granted "a fair and adequate amount of time" to file a Response. On August 27, 2003, the Center stated that the due date for filing the Response had been set for March 28, 2003, and that it had declared that no further extensions would be granted; therefore, the Center denied the request and issued a notification of default.

On August 27, 2003, Respondent objected to the notification of default by stating in essence that when the suspension ended, the Center should have set Respondent a new date to file an Answer. The Center responded on August 28, 2003, that these proceedings had been suspended only after the Response due date of March 28, 2003, had expired, so that the Center had no authority to grant another extension; the Center further advised that Respondent could file a late Response which would be forwarded to the Panel as Supplemental Filing. As of today, however, Respondent has not submitted any Supplemental Filings.

The Center appointed Andrea Mondini as the sole panelist in this matter on September 2, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Considering that, after two extensions, the Response due date had been set for March 28, 2003, whereby the Center expressly declared that no further extension would be granted, and further considering that proceedings were suspended on April 4, 2003, i.e. after the due date for the Response, the Panel finds that Respondent is in default.

4. Factual Background

The Complainant is a provider of private health insurance in numerous countries of the world and owns registrations of the trademark IHI in block letters in several countries, including a Community Trademark registration no. 319244 and a German trademark registration no. 39616123, both in International Class 36 for insurance and financial services and both with priority date of April 1, 1996, (Exhibit 3 to the Complaint). The Complainant also owns registrations of the domain names <ihi.dk>, <ihidk.com> and <ihi-danmark.com> (Exhibit 5 to the Complaint).

The Respondent is active in the private health and life insurance business (Exhibit 8 and 9 to the Complaint).

The Domain Name was registered on April 19, 2002, (Exhibit 1 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends:

• that the Domain Name is confusingly similar to its IHI trademark because "ihi" is the predominant part of the Domain Name, whereas the suffix "dk" is the official abbreviation for "Denmark" and is therefore not distinctive;

• that the Respondent has no rights or legitimate interest in respect of the Domain Name;

• that the Domain Name resolves to a website of BuyDomains.com where it is stated that the Domain Name is reserved;

• that Respondent’s father used to act as agent for the Complainant and that Complainant terminated the agency agreement in 1987;

• that being a former agent of Complainant, Respondent knew of the Complainant’s trademarks and registered the Domain Name in bad faith in order to disrupt the Complainant’s business and to prevent Complainant from adopting the Domain Name;

• that passive holding of the Domain Name constitutes bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant

has shown

that it

owns registrations

of the acronym

"IHI"

as a word

mark in

numerous

countries.

The suffix

"dk"

is the official

abbreviation

for "Denmark"

and has

no distinctive

character

in itself.

Previous

panel decisions

held that

the addition

of a country

code to

a trademark

is not sufficient

to avoid

confusing

similarity

(WIPO

Case No.

D2001-1231

<bmw-uk.com>;

WIPO

Case No.

D2001-0993

<porche-usa.com>;

WIPO

Case No.

D2000-0599

<telia-se.com>).

Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark IHI held by Complainant.

B. Rights or Legitimate Interests

Respondent’s name does not contain the letters "ihi-dk", nor is there any indication that Respondent is commonly known by the Domain Name. Moreover, the Domain Name resolves to a website of BuyDomains.com where it is stated that the Domain Name is reserved: clearly, this does not constitute a bona fide offering of goods or services. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

According

to Complainant’s

allegations

(which have

not been

denied by

Respondent)

Respondent’s

father used

to act as

agent for

the Complainant

prior to

1987. Therefore,

and further

considering

that Respondent

is in the

insurance

business

(as evidenced

by Respondent’s

website),

Respondent

was obviously

aware of

the existence

of the Complainant’s

trademarks.

Complainant

passively

held the

Domain Name

for more

than a year.

It is well

established

that the

passive

holding

of a domain

name may

constitute

use in bad

faith (WIPO

Case No.

D2000-0003

<telstra.org>).

Therefore,

the Panel

finds that

Respondent

registered

and used

the Domain

Name in

bad faith

in order

to disrupt

the Complainant’s

business

and to prevent

Complainant

from adopting

the Domain

Name.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ihi-dk.com> be transferred to the Complainant.

Andrea Mondini

Sole Panelist

Date: September 4, 2003