Wawanesa Mutual Insurance Co. v. -- / Peter Folan / Merab Okruashvili
Claim Number: FA1206001450884
Complainant is Wawanesa Mutual Insurance Co. (“Complainant”), represented by James L. Bikoff, Washington, D.C., USA. Respondent is -- / Peter Folan / Merab Okruashvili (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wawanesaInsurance.net> and <wawanesa.org>, registered with Tucows.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2012; the National Arbitration Forum received payment on June 27, 2012.
On June 28, 2012, Tucows confirmed by e-mail to the National Arbitration Forum that the <wawanesaInsurance.net> and <wawanesa.org> domain names are registered with Tucows and that Respondent is the current registrant of the names. Tucows has verified that Respondent is bound by the Tucows 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 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 2012 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@wawanesaInsurance.net and postmaster@wawanesa.org. Also on July 3, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
· Respondent, Merab Okruashvili, is the registrant of both of the disputed domain names.
· Complainant owns rights in the WAWANESA mark.
· Respondents’ <wawanesaInsurance.net> and <wawanesa.org> domain names are identical and confusingly similar to the WAWANESA mark.
· Respondents are not commonly known by the <wawanesaInsurance.net> and <wawanesa.org> domain names.
· Respondents are not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
· Respondents are serial cybersquatters and have already been a part of a previous UDRP decision in which the panel ordered the transfer of the domain name to the respective complainant. See Amica Mut. Ins. Co. v. Contactprivacy.com/Merab Okruashvili, D2009-0406 (WIPO May 15, 2009).
· Respondents intentionally attempt to attract, for commercial gain, Internet users to Respondents’ pay-per-click website by creating a likelihood of confusion as to Complainant’s affiliation with the <wawanesaInsurance.net> and <wawanesa.org> domain names.
· Respondents had knowledge of Complainant’s WAWANESA mark at the time Respondents registered the <wawanesaInsurance.net> and <wawanesa.org> domain names.
B. Respondent
Respondent did not submit a Response.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent, Merab Okruashvili, is the registrant of both of the disputed domain names. Complainant argues that, while “-“ is listed as the registrant of the <wawanesaInsurance.net> domain name, “Merab Okruashvili” is listed as the administrative contact. Complainant asserts that it contacted Respondent, Merab Okruashvili, about transferring the <wawanesaInsurance.net> domain name and Respondent refused, stating that it would retain the domain name. Complainant alleges that, for the <wawanesa.org> domain name, “Peter Folan” is the registrant listed in the WHOIS information. However, Complainant claims that Respondent, Merab Okruashvili, is also listed as the administrative contact in the WHOIS information and the WHOIS information contains the same address as the <wawanesaInsurance.net> domain name. Based on this information, Complainant contends that a single entity controls both of the disputed domain names and that “Merab Okruashvili” is the single entity.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and will proceed with the instant proceedings. Respondents will be collectively referred to as “Respondent.”
There are two Respondents in this matter: Peter Folan and Merab Okruashvili. Complainants contend that Respondent, Peter Folan, is an affiliate of Respondent, Merab Okruashvili.
The Panel accepts that the evidence in the Complaint establishes a sufficient nexus or link between the Respondents and will treat them all as a single entity in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it owns rights in the WAWANESA mark. According to Complainant, Complainant holds trademark registrations for the WAWANESA mark with the USPTO (Reg. No. 3,913,378 filed June 17, 2010; registered February 1, 2011) and the CIPO (e.g., Reg. No. 1,504,580 registered January 5, 2012). The Panel determines that Complainant’s trademark registrations adequately demonstrate Complainant’s rights in the WAWANESA mark, regardless of where Respondent resides or operates, under Policy ¶ 4(a)(i), dating back to the USPTO filing date of June 17, 2010. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues that it began using the WAWANESA mark on September 25, 1896 in Canada and began using the mark in the United States in 1975. The Panel notes that Complainant lists its first-use date as 1896 in its USPTO trademark registration. Complainant claims that it owns multiple domain names that contain variations of Complainant’s WAWANESA mark, such as <wawanesa.com> and <wawanesainsurance.us>. Complainant contends that it first began using the <wawanesa.com> and <wawanesainsurance.us> domain names to host Complainant’s website in 1996. Complainant alleges that it registered the text, computer program, and artwork of its official website the United States Copyright Office (Reg. No. 7-352-439 registered August 27, 2010). In light of this evidence, the Panel concludes that Complainant owns common law rights in the WAWANESA mark for the purposes of Policy ¶ 4(a)(i), dating back to 1896. See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
Complainant contends that Respondent’s <wawanesaInsurance.net> domain name is confusingly similar to the WAWANESA mark. Complainant notes that the <wawanesaInsurance.net> domain name contains the WAWANESA mark in its entirety and the term “insurance,” which Complainant claims creates an association with Complainant’s goods and services. The Panel notes that the disputed domain name also contain the generic top-level domain (“gTLD”) “.net.” For the <wawanesaInsurance.net> domain name, the Panel finds that the additions of the descriptive term and the gTLD “.net” fail to adequately distinguish the disputed domain name. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that the <wawanesaInsurance.net> domain name is confusingly similar to the WAWANESA mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wawanesa.org> domain name is identical to the WAWANESA mark. Complainant also notes that the <wawanesa.org> domain name contains the WAWANESA mark in its entirety. The Panel notes that the disputed domain name combines the WAWANESA mark with the gTLD “.org.” The Panel determines that the addition of a gTLD does not prevent the Panel from holding that the <wawanesa.org> domain name is identical to the WAWANESA mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
According to Complainant, Respondent is not commonly known by the <wawanesaInsurance.net> and <wawanesa.org> domain names. Complainant argues that Respondent is not affiliated with Complainant and is not authorized to register or use domain names incorporating Complainant’s WAWANESA mark. The Panel notes that Respondent did not respond to this case and did not provide any evidence that it is commonly known by the disputed domain names. The Panel further finds that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Thus, the Panel holds that Respondent is not commonly known by the <wawanesaInsurance.net> and <wawanesa.org> domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that the <wawanesaInsurance.net> and <wawanesa.org> domain names resolve to websites that contain images that mimic the images found on Complainant’s official websites. Complainant argues that the resolving websites purport to be connected with Complainant by including statements such as “This is where Wawanesa Insurance comes to help you, our valued customer” and “We can offer great rates and attractive terms.” Id. Complainant further contends that Respondent includes a copyright claim at the bottom of the websites, which the Panel notes states “Copyright © 2006 – 2012 Wawanesa Insurance.” Id. Complainant alleges that Respondent provides hyperlinks at the bottom of the resolving websites that purport to provide quotes for Complainant’s products, but instead provide quotes for competing insurance companies. Id. Complainant argues that Respondent is attempting to pass itself off as Complainant in an effort to collect pay-per-click fees. Based on this evidence, the Panel finds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <wawanesaInsurance.net> and <wawanesa.org> domain names. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant has proven this element.
Complainant alleges that Respondent is a serial cybersquatter and has already been a part of a previous UDRP decision in which the panel ordered the transfer of the domain name to the respective complainant. See Amica Mut. Ins. Co. v. Contactprivacy.com/Merab Okruashvili, D2009-0406 (WIPO May 15, 2009). The Panel determines that one prior UDRP case is sufficient evidence of Respondent’s pattern of bad faith registration and use, and concludes that Respondent registered and uses the <wawanesaInsurance.net> and <wawanesa.org> domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant avers that Respondent uses the <wawanesaInsurance.net> and <wawanesa.org> domain names to intentionally attract, for commercial gain, Internet users to Respondent’s pay-per-click websites by creating a likelihood of confusion as to Complainant’s affiliation with the domain names. Complainant claims that Respondent creates this likelihood of confusion by using Complainant’s images, name, mark, and copyright notice. Complainant argues that Respondent profits from pay-per-click fees. The Panel determines that Respondent is attempting to commercially benefit from Internet user confusion, and the Panel finds that Respondent registered and uses the <wawanesaInsurance.net> and <wawanesa.org> domain names in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Complainant alleges that Respondent had knowledge of Complainant’s WAWANESA mark at the time Respondent registered the <wawanesaInsurance.net> and <wawanesa.org> domain names based on Complainant’s trademark registrations and Complainant’s widespread use of the WAWANESA mark. The Panel notes that the content of the resolving websites also indicates knowledge of Complainant’s WAWANESA mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wawanesaInsurance.net> and <wawanesa.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 7, 2012
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