Country Mutual Insurance Company / Country Life Insurance Company v. Zhichao Yang
Claim Number: FA2105001944350
Complainant is Country Mutual Insurance Company / Country Life Insurance Company (“Complainant”), represented by Liz Brodzinski of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xountryfinancial.com>, <countryfinamcial.com>, <countyrfinancial.com>, <countryfinncial.com>, <cauntryfinancial.com>, <countryflnancial.com>, <countrfyinancial.com>, <cointryfinancial.com>, <conutryfinancial.com>, <countryfianncial.com>, <countryfniancial.com>, <countryfinnacial.com>, <cuontryfinancial.com>, <countryfianancial.com>, <ciuntryfinancial.com>, <countryifnancial.com>, <counttyfinancial.com>, <countryfinancual.com>, <coumtryfinancial.com>, <countryfinanclal.com>, <countryfimancial.com>, <c0untryfinancial.com>, <countryfunancial.com>, and <countryfiniancial.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2021; the Forum received payment on May 10, 2021. The Complaint was received in English.
On May 11, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <xountryfinancial.com>, <countryfinamcial.com>, <countyrfinancial.com>, <countryfinncial.com>, <cauntryfinancial.com>, <countryflnancial.com>, <countrfyinancial.com>, <cointryfinancial.com>, <conutryfinancial.com>, <countryfianncial.com>, <countryfniancial.com>, <countryfinnacial.com>, <cuontryfinancial.com>, <countryfianancial.com>, <ciuntryfinancial.com>, <countryifnancial.com>, <counttyfinancial.com>, <countryfinancual.com>, <coumtryfinancial.com>, <countryfinanclal.com>, <countryfimancial.com>, <c0untryfinancial.com>, <countryfunancial.com>, and <countryfiniancial.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 May 18, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of June 7, 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@xountryfinancial.com, postmaster@countryfinamcial.com, postmaster@countyrfinancial.com, postmaster@countryfinncial.com, postmaster@cauntryfinancial.com, postmaster@countryflnancial.com, postmaster@countrfyinancial.com, postmaster@cointryfinancial.com, postmaster@conutryfinancial.com, postmaster@countryfianncial.com, postmaster@countryfniancial.com, postmaster@countryfinnacial.com, postmaster@cuontryfinancial.com, postmaster@countryfianancial.com, postmaster@ciuntryfinancial.com, postmaster@countryifnancial.com, postmaster@counttyfinancial.com, postmaster@countryfinancual.com, postmaster@coumtryfinancial.com, postmaster@countryfinanclal.com, postmaster@countryfimancial.com, postmaster@c0untryfinancial.com, postmaster@countryfunancial.com, postmaster@countryfiniancial.com. Also on May 18, 2021, the Chinese and English 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two identified Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint,” while the Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In the case before us, Complainants Country Mutual Insurance Company and Country Life Insurance Company are described as the registered co-owners of the trademark at issue (COUNTRY FINANCIAL) and they are asserted to be in privity with one another. Inasmuch as Respondent does not contest these assertions, we conclude that the two entities have a sufficient nexus to one another for each to claim rights in the mark. Accordingly, we will throughout this proceeding refer to the two entities as a single Complainant. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA666119 (Forum May 12, 2006):
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Preliminary Issue: Language of Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
a. Respondent is proficient in English as demonstrated by its registration of multiple domain names containing sophisticated typographically erroneous versions of Complainant’s English language word mark, and
b. Respondent has registered of all of those domain names using the English language generic Top Level Domain (“gTLD”) “.com.”
For the indicated reasons, none of which Respondent refutes, and because translating the documents required to prosecute this proceeding in Chinese would put Complainant to a substantial financial burden and unnecessarily delay the proceeding, we look to the provision in UDRP Rule 11(a) which permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,….” In light of this proviso, we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant is a provider of insurance, estate planning, investment management and annuities services to nearly one million households and businesses in the United States.
Complainant holds a registration for the COUNTRY FINANCIAL service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,969,917, registered May 31, 2011.
Respondent registered each of the following domain names on either July 23, 2020, or August 17, 2020: <xountryfinancial.com>, <countryfinamcial.com>, <countyrfinancial.com>, <countryfinncial.com>, <cauntryfinancial.com>, <countryflnancial.com>, <countrfyinancial.com>, <cointryfinancial.com>, <conutryfinancial.com>, <countryfianncial.com>, <countryfniancial.com>, <countryfinnacial.com>, <cuontryfinancial.com>, <countryfianancial.com>, <ciuntryfinancial.com>, <countryifnancial.com>, <counttyfinancial.com>, <countryfinancual.com>, <coumtryfinancial.com>, <countryfinanclal.com>, <countryfimancial.com>, <c0untryfinancial.com>, <countryfunancial.com> and <countryfiniancial.com>.
All of the domain names are confusingly similar to Complainant’s COUNTRY FINANCIAL mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not authorized Respondent to use the COUNTRY FINANCIAL service mark.
Respondent does not use any of the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
All of the domain names are inactive.
Respondent does not have rights to or legitimate interests in any of the domain names.
In registering and holding the domain names, Respondent has engaged in a pattern of bad faith registration and use.
Respondent knew of Complainant’s rights in the COUNTRY FINANCIAL mark when it registered the domain names.
Each of the domain names is an instance of typo-squatting.
Respondent both registered and now uses all of the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the COUNTRY FINANCIAL service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all of Respondent’s contested <xountryfinancial.com>, <countryfinamcial.com>, <countyrfinancial.com>, <countryfinncial.com>, <cauntryfinancial.com>, <countryflnancial.com>, <countrfyinancial.com>, <cointryfinancial.com>, <conutryfinancial.com>, <countryfianncial.com>, <countryfniancial.com>, <countryfinnacial.com>, <cuontryfinancial.com>, <countryfianancial.com>, <ciuntryfinancial.com>, <countryifnancial.com>, <counttyfinancial.com>, <countryfinancual.com>, <coumtryfinancial.com>, <countryfinanclal.com>, <countryfimancial.com>, <c0untryfinancial.com>, <countryfunancial.com> and <countryfiniancial.com> domain names are confusingly similar to Complainant’s COUNTRY FINANCIAL mark. Each of the domain names is a misspelled version of the mark, with only the deletion of the space between its terms and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018):
The Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) “.com.”
See also Lucasfilm Entertainment Company Ltd. LLC v George Ring, FA 1673825 (Forum June 7, 2016) (finding that, although a respondent’s domain name <lukasfilm.com> incorporated the LUCASFILM mark of another and merely substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark).
Respondent’s elimination of the space between the terms of complainant’s mark is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
[S]paces between words are not significant in determining the similarity of a domain name and a mark because… spaces are not reproducible in a domain name.
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the disputed domain names, and that Complainant has not authorized Respondent to use the COUNTRY FINANCIAL mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Zhichao Yang,” which does not resemble any of them. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use any of the disputed domain names in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that, all of the domain names are inactive (i.e.: passively held). Failure to make any active use of a domain name for an extended period, as here, is neither a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) because it is neither a commercial or noncommercial use at all. See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is evident that each of the contested domain names is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in creating a domain name in order to take advantage of the inadvertent errors made by Internet users in entering into a web browser the name of an enterprise with which they wish to do business online. Typo-squatting, especially when practiced on a grand scale as here, with twenty-four (24) variously misspelled versions of the same service mark, is potent evidence of Respondent’s bad faith in registering and holding the domain names as is alleged in the Complaint. See, for example, Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum September 7, 2018):
Typo[-]squatting itself is evidence of relevant bad faith registration and use [of a domain name].
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that all of the domain names <xountryfinancial.com>, <countryfinamcial.com>, <countyrfinancial.com>, <countryfinncial.com>, <cauntryfinancial.com>, <countryflnancial.com>, <countrfyinancial.com>, <cointryfinancial.com>, <conutryfinancial.com>, <countryfianncial.com>, <countryfniancial.com>, <countryfinnacial.com>, <cuontryfinancial.com>, <countryfianancial.com>, <ciuntryfinancial.com>, <countryifnancial.com>, <counttyfinancial.com>, <countryfinancual.com>, <coumtryfinancial.com>, <countryfinanclal.com>, <countryfimancial.com>, <c0untryfinancial.com>, <countryfunancial.com> and <countryfiniancial.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 15, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page