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WIPO Arbitration and Mediation Center


Nationwide Mutual Insurance Company v. Hillbeck Websites

Case No. D2008-1410

1. The Parties

The Complainant is Nationwide Mutual Insurance Company, of Ohio, United States of America, represented by Bricker & Eckler LLP, United States of America.

The Respondent is Hillbeck Websites, of Milton Keynes, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <naitionwide.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2008. On September 17, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On September 17, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2008.

The Center appointed John Swinson as the sole panelist in this matter on October 30, 2008. 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 company based in Ohio, United States of America (“United States”). It provides insurance services (including vehicle, health and life insurance); investment services (including retirement plans, annuities and mutual funds) and banking and other financial services.

The Complainant has a history which dates back to 1926 (when it started out as Farm Bureau Mutual Automobile Insurance Company providing automobile insurance). It gradually started providing a wider variety of insurance services, and its name was changed to Nationwide Mutual Insurance Company in 1955. Shortly after, the Complainant began offering financial services in addition to its insurance services.

The Complainant operates its primary business website from “www.nationwide.com”. On this website, an Internet user can obtain insurance quotes, file insurance claims, or log into their banking account.

The disputed domain name was registered on November 16, 2004.

At the time of preparing this decision, the website operating from the disputed domain name has a heading “Naitionwide.com. Finance made easy” and tabs under the headings of “Home”, “Loans”, “Debt Management”, “Credit Cards” and “Mortgages”. The copyright in the website is stated to exist in favour of Domain Parking International LLP.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant, both itself and through its licensed affiliates and subsidiaries, has continuously provided insurance and financial services in the United States under the trade mark NATIONWIDE, for over fifty years (since 1955).

The services provided by the Complainant under the NATIONWIDE mark include property and casualty, commercial, homeowners, automobile, life, health, group accident, fire and disability insurance, and financial services involving mortgages, individual annuities, money management, retirement programs, investment management, mutual funds and pension programs. The Complainant provides these services across all fifty states of the United States.

The Complainant owns the following registered trade marks for NATIONWIDE in the United States:

NATIONWIDE - Trade Mark Registration No. 854888, registered August 13, 1968 for insurance services;

NATIONWIDE - Trade Mark Registration No. 2017147, registered November 19, 1996 for financial services;

NATIONWIDE (and design) - Trade Mark Registration No. 2371088, registered July 25, 2000 for insurance and financial services.

The Complainant also owns several other registered word trade marks in the United States which include the word nationwide, such as NATIONWIDE FINANCIAL SERVICES, NATIONWIDE FINANCIAL, NATIONWIDE BANK and NATIONWIDE IS ON YOUR SIDE.

The Complainant has used NATIONWIDE as a trade mark continuously and exclusively in connection with its insurance and financial services since at least 1955.

The Complainant currently has over 8,000 exclusive authorised agents and more than 160,000 non-exclusive registered representatives who sell the Complainant’s products throughout the United States. The Complainant exercises strict control over the use of its trade marks by its authorised agents and registered representatives.

The Complainant’s services have also been advertised extensively throughout the United States since 1955, at a significant cost, including through print media, radio, television and high profile sponsorship events. In addition, the Complainant is one of the largest insurers in the United States, and is currently 108th on the Fortune 500 list, and 364th on the Global 500 listing. The general public associates the NATIONWIDE trade mark with the Complainant’s products and services, and associates the mark as an indicator of quality products and service.

Since 1994, the Complainant has owned and used the <nationwide.com> domain name in relation to its business.

In June 2008, the Complainant became aware that the Respondent had registered the disputed domain name. Registration occurred long after NATIONWIDE had become a famous trade mark of the Complainant.

The Respondent registered the disputed domain name to capitalise on the recognition of the Complainant’s trade mark, and to seek to take advantage of misdirected traffic resulting from a typographical error. The disputed domain name incorporates the Complainant’s mark in its entirety and is therefore confusingly similar.

“Naition” and “Naitionwide” are not words which make any sense, and there is no reason for the Respondent registering the disputed domain name other than to benefit from misdirected Internet traffic. The Respondent is typo squatting upon the Complainant’s trade marks and domain names.

The Respondent is not a licensee of, or affiliated with the Complainant. The Respondent’s name does not include the term “Naitionwide” or “Nationwide” and the Respondent’s business is not related to insurance products.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent clearly has no intention to legitimately use the disputed domain name, nor could it have a legitimate purpose given the absolute and transparent attempt to trade off the Complainant’s trade mark and products and services.

The Respondent created a website from the disputed domain name to make money from the Complainant’s trade marks. Included in the “Popular Searches” section of the Respondent’s website are categories such as “insurance” and “cheap insurance”. These links lead Internet users to direct competitors of the Complainant, and the Complainant’s own website page. The Respondent makes money each time an Internet user follows one of the links on the website.

All of the links on the website except for one lead a lost Internet user, who was looking for the Complainant’s services, to a competitor of the Complainant.

The Respondent has tailored the website to contain links to products and services in competition with the Complainant, with knowledge of the Complainant’s prior rights in NATIONWIDE. The Respondent has therefore registered and is using the disputed domain name in bad faith to benefit from misdirected traffic, and to profit from this traffic.

Such use by the Respondent is neither legitimate, nor good faith use of the domain name. The Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s mark, which is evidence of bad faith registration.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or a service in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied.

A. Identical or Confusingly Similar

The Complainant has shown that it holds long standing registered trade mark rights in NATIONWIDE in the United States. (Its earliest NATIONWIDE trade mark has been in existence for over 40 years.) The evidence provided by the Complainant demonstrates that the NATIONWIDE trade mark would be well known in the United States, and commonly associated with the Complainant and the provision of insurance and financial services.

When comparing NATIONWIDE with the disputed domain name, the “.com” portion of the domain name is to be disregarded. That leaves the only difference between the disputed domain name and the Complainant’s trade mark to be the addition of an “i” in the domain name.

An additional “i” is a very minor difference which may be difficult to perceive at first glance, and is therefore not sufficient to prevent a finding of confusing similarity. Furthermore, slight changes in a well known trade mark or word are often found to be purposeful misspellings, “designed to take advantage of mistakes that consumers are likely to make when intending to enter Complainant’s web site address” (see for example Infospace.com, Inc. v Registrar Administrator Lew Blank, WIPO Case No. D2000-0069). An Internet user intending to the visit the Complainant’s official website (located at “www.nationwide.com”) could easily make a spelling error and end up at the Respondent’s website.

The disputed domain name also contains the Complainant’s NATIONWIDE trade mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a distinctive mark in its entirety (and the Panel considers that NATIONWIDE is distinctive and well known at least in the United States), it is confusingly similar to that mark (see for example EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).

Therefore, the Panel finds that disputed domain name is confusingly similar to the NATIONWIDE trade mark in which the Complainant has rights.

The first element has been met.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is established, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy lists three ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“(i) before any notice to you of the dispute, your use of, 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has submitted sufficient evidence to establish that the Respondent is not known as “naitionwide”, has acquired no trade mark or other rights in that name, and has not been licensed or authorised by the Complainant to use its NATIONWIDE mark or to register the disputed domain name.

The website operating from the disputed domain name currently provides a range of links under broad subject headings such as “Loans”, “Debt Management” and “Mortgages”. These are all types of financial services, which are the same as or relate to the services provided by the Complainant as part of its core business. Under these tabs are a list of “Featured Companies” which provide direct links to third party websites, some of which would be direct competitors of the Complainant. The Panel notes that at the time the Complainant was preparing the Complaint, the website listed categories related to “Insurance” and “Cheap Insurance”, which are also core services provided by the Complainant.

There are some seemingly unrelated categories on the home page under the “Popular Searches” tab, such as “Shopping”, “Travel”, “Sport” and “Entertainment” however these links do not appear to be operational.

The website also displays a search facility. A search for “nationwide” returns three results which refer to the Complainant and/or its website. At other times the search function appears not to work (for example, a search for “insurance” returned no results).

From the changing content of the website and the large number of third party links, it is clear that the Respondent is making a commercial use of the website, and is receiving a profit from the sponsored links displayed on the website.

Further, as pointed out by the Complainant, “naition” and “naitionwide” are made up words with no ordinary meaning. It is unlikely that any person would legitimately choose to use these terms without any other motive, and it is more likely that the Respondent’s reason for choosing this name was to create an impression of an association with the Complainant and its services.

The evidence clearly suggests that the Respondent registered and is using the disputed domain name, only because it is similar to the Complainant’s well known mark, in the hope that it will generate a lot of traffic to its website due to user confusion and mistake. In turn the Respondent will receive commercial gain from advertising.

Accordingly, the Panel infers that the Respondent chose a purposeful misspelling of the Complainant’s mark and domain name, to redirect Internet users looking for the Complainant’s website to its own website. Such use cannot constitute a bona fide offering of goods of services, or a non-commercial or fair use under paragraph 4(c) (see The Coryn Group, Inc., Apply Vacations West, Inc. v. V.S. International, WIPO Case No. D2003-0664).

The Complainant has established a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent did not submit a response, it has been unable to rebut the prima facie case established by the Complainant.

The Panel therefore finds that the second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Complainant alleges that the Respondent has engaged in the type of behaviour described in subparagraph (iv), namely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

The Panel has already found that the Respondents chose a purposeful misspelling of the Complainant’s mark and domain name, in order to create confusion among Internet users and to redirect traffic to the Respondent’s own website.

The disputed domain name was registered by the Respondent in 2004, well after the Complainant established its registered trade mark rights in NATIONWIDE in the United States, and over ten years after the Complainant first registered its <nationwide.com> domain name.

By choosing a word such as “naitionwide”, which has no ordinary meaning and is almost identical to NATIONWIDE, the Panel infers that the Respondent knew of the Complainant’s trade mark and brand at the time of registering the disputed domain name. The Respondent deliberately chose a domain name which was likely to be confused with the Complainant’s trade mark and own domain name. The content of the website (which promotes to the same or similar financial services that are provided by the Complainant) reinforces this view.

As discussed above, the Respondent is making a commercial gain from the website, by providing sponsored links to goods and services which in some cases directly compete with the Complainant’s core services.

In summary, the Panel infers that the Respondent registered the disputed domain name, relying on a misspelling of a well known mark in order to trade off the popularity of the Complainant’s NATIONWIDE brand for commercial gain. This is ample evidence of bad faith under paragraph 4(b)(iv).

Accordingly, the Panel finds that the third element has been met.

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

John Swinson
Sole Panelist

Dated: November 7, 2008


Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-1410.html


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