The Hagerty Group, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2207002005142
Complainant is The Hagerty Group, LLC (“Complainant”), represented by John Di Giacomo of Revision Legal, PLLC, Michigan, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haqgerty.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2022; the Forum received payment on July 21, 2022.
On July 22, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <haqgerty.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2022 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@haqgerty.com. Also on July 26, 2022, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a Michigan-based exotic car insurance company. Complainant claims rights in the HAGERTY mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,724,455 registered December 15, 2009). The domain name <haqgerty.com>[i] is confusingly similar because it differs only through an intentional misspelling of the HAGERTY mark, with the addition of the “.com” generic top-level domain (“gTLD”).
2. Respondent lacks rights or legitimate interests in the <haqgerty.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the HAGERTY mark in any way.
3. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain to host pay-per-click advertisements and to divert traffic from Complainant’s website to its own.
4. Respondent registered and uses the <haqgerty.com> domain in bad faith. Respondent uses the domain to divert traffic from Complainant’s website to commercially benefit by hosting third-party pay-per-click links.
5. Respondent had actual and/or constructive knowledge of Complainant’s rights in the HAGERTY mark prior to registration of the disputed domain.
6. Furthermore, Respondent is engaging in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HAGERTY mark. Respondent’s domain name is confusingly similar to Complainant’s HAGERTY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <haqgerty.com> domain name and that Respondent registered and uses the domain name 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:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 asserts rights to the HAGERTY mark through its registration with the USPTO (e.g., Reg. No. 3,724,455 registered December 15, 2009). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of registration with the USPTO, the Panel holds that Complainant has rights in the HAGERTY mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <haqgerty.com> domain name is confusingly similar to Complainant’s HAGERTY mark because it incorporates wholly Complainant’s mark differing only in that the mark is spelled incorrectly with an added “q” before also adding the “.com” gTLD. The addition of a letter and gTLD generally fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i)”); see also Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Therefore, the <haqgerty.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <haqgerty.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <haqgerty.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the HAGERTY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the <haqgerty.com> domain does not indicate that Respondent is known by the domain name. The Respondent is known as “Carolina Rodrigues.” Respondent was not given rights to use the HAGERTY mark nor is commonly known by the <haqgerty.com> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <haqgerty.com> domain name and was not granted usage rights per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <haqgerty.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Using a domain name incorporating the mark of another to divert traffic from a trademark holder is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Complainant provides a screenshot of the <haqgerty.com> domain name’s resolving website, which hosts pay-per-click advertisements for commercial benefit. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <haqgerty.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where a respondent uses a domain name incorporating the mark of another to divert traffic from a trademark holder’s website to commercially benefit, there may be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Additionally, hosting advertisement links on the domain name, even if not directly competitive with a complainant, may be a disruption of complainant’s business and thus evidence of bad faith registration and use. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant provides screenshots of the <haqgerty.com> domain hosting third-party links from which Complainant argues they commercially benefit. The Panel agrees and holds that Respondent registered and uses the <haqgerty.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the HAGERTY mark at the time of registering the <haqgerty.com> domain name. Actual knowledge of Complainant's rights in the mark prior to registering the <haqgerty.com> domain name amounts to actual knowledge that can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant points the facts that 1) the mark predates the registration of the <haqgerty.com> domain name; 2) Respondent’s usage of the domain name; 3) the domain is confusingly similar to Complainant’s mark; 4) Complainant’s trademark rights; and 5) the overall fame of Complainant’s mark. The Panel agrees and holds that Respondent registered and uses the <haqgerty.com> domain name bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <haqgerty.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 31, 2022
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