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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nationwide Mutual Insurance Company v. Forum LLC

Case No. D2006-0309

 

1. The Parties

The Complainant is Nationwide Mutual Insurance Company, Colombus, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.

The Respondent is Forum LLC, Forum Manager, Roseau, Dominica.

 

2. The Domain Name and Registrar

The disputed domain name <nationwideinsurace.com> is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2006. On March 13, 2006, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On March 14, 2006, Fabulous.com 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 March 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2006.

The Center appointed Willem J.H. Leppink as the sole panelist in this matter on April 19, 2006. 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.

 

4. Factual Background

The Complainant is a well-known mutual insurance company organized under the laws of the State of Ohio in the United States of America. The Complainant itself and through its licensed affiliates and subsidiaries, has engaged in the business of providing numerous types of insurance and financial services throughout the United States for 80 years, the last 50 years of which have been under the trade mark NATIONWIDE. From 1960, the Complainant also began offering mutual funds under the NATIONWIDE service mark.

The Complainant is the proprietor of a large portfolio of trade marks and service marks which include the name “NATIONWIDE” in all fifty states of the United States of America to identify its various insurance and financial services, i.e. the following US trade mark registrations:

- NATIONWIDE- Registration No. 854,888, registered August 13, 1968, for underwriting and sale of all lines of insurance, including fire, life, and casualty.

- NATIONWIDE (and design)- Registration No. 2,371,088, registered July 25, 2000, for insurance services, namely, underwriting and brokerage of life, health, annuity, fire, property and casualty insurance; and financial services, namely distribution and brokerage of mutual funds, money market funds, pension plans, and IRA plans.

- NATIONWIDE- Registration No. 2,017,147, registered November 19, 1996, for financial services, namely the brokerage and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, and stocks and bonds.

- NATIONWIDE ADVANTAGE MORTGAGE (and design)- Registration No. 2,811,277, registered February 3, 2004, for mortgage lending and brokerage services.

- NATIONWIDE IS ON YOUR SIDE- Registration No. 1,793,850, registered September 21, 1993, for insurance services; namely, underwriting life, health, annuity, property and casualty insurance; financial services; namely, the sale of mutual funds, money market funds, pension plans and IRA plans.

- NATIONWIDE FINANCIAL- Registration No. 2,788,512, registered December 2, 2003, for insurance and financial services, namely, life insurance underwriting; annuity underwriting; mutual fund investment; money market fund investment; administration of pension plans, retirement accounts and retirement plans; asset management services.

The Complainant uses the domain names <nationwideinsurance.com> and <nationwide.com> for its business.

In September of 2005, the Complainant became aware that the Respondent had registered the domain name <nationwideinsurance.com>. On November 11, 2005, the Complainant’s outside counsel sent the Respondent a letter demanding that the Respondent cease using the domain name <nationwideinsurance.com> and transfer it to the Complainant. Having received no response from the Respondent, the Complainant’s outside counsel sent a follow-up letter on December 4, 2005. The Respondent did not respond to any of the letters.

The Respondent is a company having its place of business in Dominica.

Included in the “Popular Categories” of the website connected to the domain name <nationwideinsurace.com> are “Nationwide Insurance,” and “Auto Insurance Rate” – both links that refer to or relate to the Complainant or its business. Following the “Nationwide Insurance” links leads viewers to a page with many links to competitors of the Complainant. Following the “Auto Insurance Rate” links also leads viewers to a page containing links to competitors of the Complainant.

When visiting the <nationwideinsurace.com> website, viewers are inundated with pop-up windows relating to insurance and the insurance industry. These windows relate to the Complainant’s competitors. The browser cannot be closed when viewing the <nationwideinsurace.com> website, without more pop-up windows relating to insurance appearing.

Each of the pages reached on the domain name <nationwideinsurace.com> by following a “popular category” link contains “sponsored links.”

After following one of the “popular category” links, the viewer arrives at a page with “Top Categories” listed on the left on the website. The Top Categories all relate to insurance and following any of those links leads to another page with links to the Complainant’s competitors.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.

The Complainant contends that the Domain Name is identical and confusingly similar to the Complainant’s trade marks. The Domain Name incorporates the well-known trade marks of the Complainant in its entirety, adding only the misspelled “insurace” at the end, whilst “insurance” is the Complainant’s main line of business and therefore, is in the opinion of the Complainant, confusingly similar to the Complainant’s trade marks.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not a licensee of, or otherwise currently affiliated with, the Complainant. The Respondent’s name does not include the word “Nationwide” and the Respondent’s business has nothing to do with the links relating to insurance products and services located on the Domain Name other than the Respondent profits, in bad faith, from misdirecting those searching for information on the Complainant to those competitive links. The Respondent clearly registered the domain name <nationwideinsurace.com> to typosquat upon the trade marks of the Complainant and the Complainant’s domain name <nationwideinsurance.com>, one of the Complainant’s websites through which it conducts a significant amount of business. The Respondent’s use of this domain to direct traffic to competitive products and services for profit is not a legitimate use. The Respondent clearly has no intention of making any legitimate use of the Domain Name, nor could it, given the absolute and transparent attempt to trade off the Nationwide Marks and Nationwide’s products and services.

The Complainant contends that the Domain Name was registered and is being used in bad faith. The Respondent’s name does not include the word Nationwide. As such, all of the content currently on the domain is misleading and confusing to consumers. The domain was registered and is being used in bad faith, with a clear intent to profit from confusion. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, <researchinmotion.com>, (when a domain name is obviously connected with a complainant and its products, its very use by a Registrant with no connection to the Complainant suggests “opportunistic bad faith”).

The Respondent registered the Domain Name long after the Nationwide Marks had become famous trade marks of the Complainant, and long after the Respondent knew of the Complainant’s superior and prior rights. That the Respondent tailored the content on the domain to relate to the Complainant’s business and directed all browsers to competitors of the Complainant demonstrates the Respondent’s awareness of the Complainant’s prior rights.

B. Respondent

The Respondent was duly notified of the administrative proceedings as stipulated under paragraph 2(a) of the Rules but did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Since the Respondent has not submitted a response, the Panel accepts as true the factual contentions made by the Complainant in accordance with the Rules, paragraph 5(e):

“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the Dispute based upon the Complaint.”

Even though there has been no response the Panel must, under the Rules, paragraph 14 (a), “Proceed to a decision on the Complaint.”

For the Complainant to succeed, it must show that each of the criteria in the Policy, paragraph 4(a) is met:

(i) Respondent’s Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Domain Name <nationwideinsurace.com> combines the undisputed trade mark “NATIONWIDE” in its entirety with the misspelled suffix “insurace” at the end. The misspelled suffix “insurace” does not render the disputed Domain Name significantly different from the Complainant’s NATIONWIDE trade marks. As set forth in numerous cases, the mere addition of a descriptive word as suffix to a trade mark does not prevent confusing similarity between the Domain Name and the trade marks (see Dow Jones & Co., Inc. v. Down Jones Update, WIPO Case No. D2000-0495, (<dowjonesonline.com> held confusingly similar to DOW JONES mark); Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000-0115, (<tarzanonline.com>, <tarzanonline.net>, and <tarzanonline.org> held confusingly similar to TARZAN mark).

In this case, the suffix “insurace” is a misspelled descriptive word, i.e. “insurance”. This typosquatting evidently also results in the Domain Name being confusingly similar to the trade mark concerned. The fact that the Complainant uses the domain name <nationwideinsurance.com> for its business increases the likelihood of confusion amongst the public as this makes clear that the Respondent only registered the Domain Name to profit from misdirected traffic in search for the Complainant’s services and products.

Moreover, typosquatting causes, by definition, confusingly similarity to the Complainant’s trademarks (“Respondent’s typo squatting, by its definition, renders the domain name confusingly similar to Complainant’s mark.”); see, Dow Jones & Co. v. Powerclick, Inc., WIPO Case No. D2000-1259, <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com>, and <wwwbarronsmag.com> (holding that the deliberate introduction of errors or changes does not render the Respondent’s domain name less confusingly similar to the core trademark held by the Complainant).

Therefore, under the Policy, paragraph 4(a)(i) the Panel considers the Domain Name confusingly similar to the trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4 (c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of the Respondent in a Domain Name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the Domain Name or a Name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organizations) has been commonly known about the Domain Name, even though it has not acquired any trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleading the divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.

Before notice to the Respondent of the dispute, there is no evidence of his use, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. To the contrary, the Respondent is using the Domain Name to typosquat upon the Complainant’s trade marks and reputation in order to trick browsers looking for the Complainant’s website into viewing unrelated advertisements or websites

The Respondent has also not been previously known under the disputed Domain Name. To the contrary, the Respondent registered the Domain Name long after the NATIONWIDE marks had become famous trade marks of the Complainant.

The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The sole reason of the Respondent in registering and using the Domain Name is to mislead browsers and to profit from confused browsers looking for the website of the Complainant. The typo squatting of the Respondent generates more internet traffic and therefore more advertising revenue.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

By failing to file a response, the Respondent has done nothing to contest the allegations of the Complainant that it has registered and is using the Domain Name in bad faith.

The Policy, paragraph 4(b) sets out the ways in which the Complainant can show the Domain Name is registered and used in bad faith:

(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess if you documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that the Respondent engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

Based on the record, the registration and use of the Domain Name by the Respondent in bad faith is evident.

The Respondent has registered and uses the Domain Name to benefit from misdirected traffic in search of information on the Complainant and its products, by creating a likelihood of confusion with the Complainant’s trade marks and the Domain Name to attract for commercial gain internet users to the Domain Name.

Further, the Respondent is using the domain name to wrongfully divert consumers looking for the Complainant’s products and services on the internet to its website, the Respondent most likely charges third parties a fee to advertise on its site. This use is not bona fide and evidences the Respondent’s bad faith attempt to trade on the Complainant’s famous trademarks. See, Marriott Int’l, Inc. v. Seocho, FA 0303000149187 (Nat’l. Arb. Forum) (finding “Respondent[‘s] attempt to derive commercial benefit from [a] typographical error” to be evidence of bad faith use); Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716,<expediua.com>, (holding that the Respondent’s use of typographical error in the domain name to attract the Complainant’s consumers to his website for commercial gain was bad faith use).

Moreover, the fact that the Respondent uses mouse trapping techniques clearly demonstrates bad faith, especially since all these pop-up windows relate to the Complainant’s competitors. See Kidman v. Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415, <nicholekidman.com> and <nicolekidmannude.com>.

Furthermore, the fact that the Respondent tailored the content on the Domain Name to relate to the Complainant’s business and directed all browsers to competitors of the Complainant demonstrates the Respondent’s awareness of the Complainant’s prior rights.

The Panel therefore concludes that the Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.

 

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, <nationwideinsurace.com> be transferred to the Complainant.

 


 

Willem J.H. Leppink
Sole Panelist

Dated: May 3, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0309.html

 

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