Assurity Life: Loser UDRP

Assurity Life Insurance Company filed a UDRP against the AssurityLife.com domain name. The UDRP was filed at the National Arbitration Foundation (NAF), and it is Claim Number: FA1911001872882. Because the domain registrant did not file a response to the UDRP, one might presume the complainant would have a much better chance at winning the proceeding. In this particular case, the panelist, Debrett G. Lyons, found in favor of the registrant.

The UDRP decision was pretty light on discussion from the panelist. Under the Identical and/or Confusingly Similar and the Rights or Legitimate Interests sections, the panelist wrote “No findings required.” If just one aspect of the UDRP is not proven, the complaint fails. The panelist found that the domain name was not registered and used in bad faith, so a discussion about the other two aspects was deemed unnecessary.

When it came to the question about whether or not the domain name was registered and used in bad faith, here’s what the panelist wrote:

“In these proceedings there is no necessity to consider more than this third aspect of the Policy. Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. The Panel finds insufficient evidence to show that the domain name was registered in bad faith.

Registration in bad faith requires proof that it was more likely than not that Respondent knew of and targeted Complainant and its trademark. Issues of timing weigh heavily and fatally against Complainant on this occasion.

The disputed domain name was registered in May 2004. Complainant asserts both registered and common law trademark rights. Complainant owns several USPTO registrations but none earlier in time than Reg. No. 3,070,343. It was filed on September 8, 2004 and registered on March 21, 2006 and so even its filing date postdates the registration of the domain name.

The Complaint states that “Complainant first started use in commerce of its mark ASSURITY in 1996. [see] Annex E, trademark registrations.” Complainant’s assertion of common law rights is premised, not on proof of public awareness and reputation, but on the above statement, which in turn rests on the claim of first use in commerce date of June 12, 1996 shown in Reg. No. 3,070,343. That date is provided to the USPTO by a trademark applicant. There is no proof of a common law trademark by May 2004 when the domain name was registered.

Moreover, although opinions have differed as to whether the equitable doctrine of laches applies to UPRP proceedings, it has been recognized that delay in bringing proceedings is likely to place a higher burden on a complainant attempting to prove a state of affairs long ago.

These facts, taken together with the inherently descriptive character of the words comprising the disputed domain name, are determinative of the matter.”

The decision is somewhat surprising considering the registrant did not respond. It seems that UDRP panels may hold a non-response against a registrant, so kudos to the panelist for fully considering the circumstances of the domain name and dispute

I am also a bit surprised that Assurity Life Insurance Company didn’t simply buy the domain name via Afternic for $12,000. I believe the cost to file the UDRP was $1,500. That cost does not include any legal fees charged by the attorney from Venable LLP, who represented the complainant. If the company really believes this domain name is important, they should buy it.