QBE Holdings, Inc. v. Songo Loque
Claim Number: FA2012001923630
Complainant is QBE Holdings, Inc. (“Complainant”), represented by Jennifer Gregor of Godfrey & Kahn, S.C., Wisconsin, USA. Respondent is Songo Loque (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <praetorianauto.com> and <praetorianinsurancecompany.net>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2020; the Forum received payment on December 2, 2020.
On December 3, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@praetorianauto.com, postmaster@praetorianinsurancecompany.net. Also on December 11, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 25, 2021.
Additional Submissions were timely received from Complainant and Respondent on February 1, 2021 and February 5, 2021, respectively, in compliance with Supplemental Rule 7.
On February 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a large international insurance company that acquired the Praetorian Financial Group in 2007. Complainant has rights in the PRAETORIAN mark through its registration with the United States Patent and Trademark Office. (“USPTO”). (Reg. 3,268,418, registered Jul. 24, 2007). See Compl. Annex 2 Ex. B.
Respondent’s <praetorianauto.com> and <praetorianinsurancecompany.net> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and adds generic or descriptive words that describe Complainant’s services, along with the “.com” and “.net” generic top-level domains (“gTLD”).
Respondent lacks rights in the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its PRAETORIAN mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as Complainant on the disputed domain names’ resolving websites.
Respondent registered and uses the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant on the disputed domain names’ resolving websites and offering competing services. Respondent registered the disputed domain names with bad faith actual knowledge of Complainant’s rights in the PRAETORIAN mark.
B. Respondent
Respondent rents websites to companies and individuals. Respondent has contacted the renters of the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names and has taken action to address the issues brought by Complainant.
Respondent’s <praetorianauto.com> domain name was originally rented for a website about cars, but Respondent’s client modified the content to make the website similar to the <praetorianinsurancecompany.net> domain name. Respondent terminated the contract with the client and now uses the disputed domain name to host content for a “Praetorian Auto” in the trucking business.
The disputed domain name is not identical or confusingly similar with Complainant’s mark, because of the existence fo other “Praetorian” companies. Respondent has a legal interest in the domain name as it rents the disputed domain name to other clients. Respondent did not register the disputed domain name in bad faith as it was not aware of Complainant at the time of registration. Respondent further terminated the contract with the client using the disputed domain name displayed in the Complaint.
Respondent’s <praetorianinsurancecompany.net> domain name was rented to a client claiming to be in the UK before switching to the US. Respondent’s client claims it researched the PRAETORIAN mark and found no active trademarks in the US. Respondent’s client also argues if Complainant was interested in the disputed domain name it could have purchased the domain name, as Respondent claims its currently available. See Resp. Ex. D. Respondent’s client claims the PRAETORIAN use refers to the Praetorian Guard, not Complainant’s business or logo.
The <praetorianinsurancecompany.net> domain name incorporates a mark held by more than one company, and thus is not identical or confusingly similar. Respondent has a legitimate interest in the domain name as it rents out domain names as its business. Respondent did not register the disputed domain name in bad faith as it was unaware of Complainant or its claimed rights in the mark. Respondent offers to rent the disputed domain name to another PRAETORIAN company, including Complainant, if it would like.
C. Additional Submissions
Complainant
After generous extensions of time—which Respondent used to create a fraudulent website at <praetorianauto.com>—Respondent has filed a response to the Amended Complaint that further reveals that the transfer of the Domain Names is appropriate. The response makes serious misrepresentations to the Forum and demonstrates Respondent’s unartful bad faith. As the Panel well knows, three elements must be met under the Policy: 1) that the domain names are confusingly similar to a mark in which Complainant has rights; 2) that the Respondent has no rights or legitimate interests in the domain names; and 3) that the domain names were registered and are being used in bad faith. See Policy ¶ 4(a). Each of these elements is established here. As to the first element, Respondent does not dispute that Complainant owns common law trademark rights in its PRAETORIAN trademarks. As to the second and third elements—the Respondent’s submission only confirms that Respondent has no rights or legitimate interest in the domain names, and that Respondent is acting in bad faith.
Respondent
Praetorian Auto is a combination of two generic words. Praetorian is part of the world culture (just like Rosetta Stone) and it’s already used by several companies. Therefore, the Complainant doesn’t have the right to take that domain from us.
There are several companies with the name Praetorian Insurance Company with no TM currently registered and better domains are readily available should they want to build a site. The name is also a combination of generic words and we shouldn’t be stripped from this domain provided we guarantee the website will not pretend to be the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the PRAETORIAN mark through its registration with the USPTO. (Reg. 3,268,418, registered Jul. 24, 2007). See Compl. Annex 2 Ex. B. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(ii). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Additionally, Complainant claims it has common law rights in the PRAETORIAN mark. Common law rights in a mark may satisfy Policy ¶ 4(a)(i) in lieu of a registered trademark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Here, Complainant argues it established common law rights since 2007 and provides copies of its brochures and various advertising materials featuring the PRAETORIAN mark as evidence of secondary meaning. See Compl. Annex 2 Exs. D through F.
Complainant sufficiently demonstrates common law rights and the Panel finds that Complainant has properly established rights in the PRAETORIAN mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <praetorianauto.com> and <praetorianinsurancecompany.net> disputed domain names are identical or confusingly similar to Complainant’s PRAETORIAN mark. Under Policy ¶ 4(a)(i), adding generic or descriptive words that describe a Complainant’s business or services, along with the “.com” or “.net” gTLDs is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The disputed domain names incorporate Complainant’s PRAETORIAN mark in its entirety and adds the words “auto” or “insurance company”, as well as the “.com” or “.net”.
The Panel agrees with Complainant and finds the disputed domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
While Respondent contends that the <praetorianauto.com> and <praetorianinsurancecompany.net> disputed domain names are comprised of a common and generic term and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i), as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names, nor has Complainant authorized or licensed Respondent to use its PRAETORIAN mark in the disputed domain names. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.).
The WHOIS of record, along with the Response, identifies Respondent as “Songo Loque”. See Compl. Annex. Exs. A and B; see also Registrar Verification Email Response. Nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its PRAETORIAN mark in the disputed domain name.
Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <praetorianauto.com> and <praetorianinsurancecompany.net> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, and instead is engaged in activities using the domain names’ resolving websites to pass off as Complainant. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a Complainant on a disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Complainant provides screenshots of the disputed domain names’ resolving websites, which appear to use Complainant’s PRAETORIAN marks and photos and content related to insurance to impersonate Complainant. See Compl. Annex 1 Exs. F through K.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden now must shift to Respondent to show it does have rights or legitimate interests.
Respondent argues that it uses the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent argues further that it has rights or legitimate interests in the disputed domain names as it is a domain name renter. See Resp. Ex. A
Respondent also argues that the term “Praetorian” of the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent provides examples of two other companies allegedly using the word “Praetorian” in their business titles. See Resp. Exs. B and C.
The Panel does not agree with Respondent. The disputed domain names are registered to Respondent. Therefore any illicit acts by lessees of the domain names are attributable to Respondent. It is of no consequence that Respondent does not control the acts of the lessees. The Respondent claims to have terminated the relationship with the delinquent lessee and has leased the domain name to a new lessee with services that are distinct from those of Complainant. However, from the evidence put forward by Complainant, the new lessee has disavowed any relationship with the Respondent.
Further, Respondent’s arguments about the common and generic terms not being protected by the Policy, such arguments cannot be heeded, where, as here, the website resolving from the disputed domain name features the Complainant’s mark, various photographs and competing services related to the Complainant’s business.
Under the circumstances, the Panel finds the Respondent’s assertions to be less than credible and finds that Respondent has not establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), because the Respondent was not using the domain name for a bona fide offering of goods or services.
Therefore, the Panel finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names for bad faith disruption and for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and offer competing services with a Complainant, while using a Complainant’s mark on the disputed domain name’s resolving website is generally considered bad faith disruption for commercial gain. See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving websites, which feature Complainant’s marks and appear to be passing off as Respondent in order to sell fake or competing insurance services. See Compl. Annex 1 Exs. F through K.
The Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <praetorianauto.com> and <praetorianinsurancecompany.net> domain name in bad faith as it had actual knowledge of Complainant’s rights in the PRAETORIAN marks at the time of registration. Actual knowledge of rights in a mark at the time of registration is generally sufficient in establishing bad faith, and may be demonstrated by Respondent registering identical or confusingly similar domain names and/or Complainant’s use of the disputed domain names’ resolving websites under Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”).
The Panel recalls that the disputed domain names are identical or confusingly similar to Complainant’s PRAETORIAN mark, while at the same time, their resolving websites attempt to pass off as Complainant and offer false or competing insurance services. See Compl. Annex. 1 Exs. F through K. The Panel also notes the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names were registered on January 10, 2008 and September 22, 2015, respectively, subsequent to Complainant’s Trademark registration and establishment of common law rights in the PRAETORIAN mark.
Therefore, based on the facts as presented, the Panel finds Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <praetorianauto.com> and <praetorianinsurancecompany.net> domain names be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: February 16, 2021
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