Novae Group Plc v. MHJ c/o Frank Curtis
Claim Number: FA1411001588440
Complainant is Novae Group Plc (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is MHJ c/o Frank Curtis (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <novaeinsurance.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 5, 2014; the National Arbitration Forum received payment November 5, 2014.
On November 6, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <novaeinsurance.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2014, 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@novaeinsurance.com. Also on November 6, 2014, 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 December 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Complainant owns the NOVAE mark through registration with the EU’s Office for Harmonization in the Internal market (“OHIM”) (Reg. No. 5,180,211, registered January 4, 2008). Complainant uses the NOVAE mark in connection with insurance services. The <novaeinsurance.com> domain name is confusingly similar to the NOVAE mark as the added term “insurance” relates to Complainant’s business.
Complainant has no association with Respondent. Respondent is not commonly known by the disputed domain name. The <novaeinsurance.com> domain name resolves to a website that is a copy of a previous version of Complainant’s website. Respondent is using the resolving website to pass itself off as Complainant and to phish for user’s personal information. See Compl., at Attached Ex. 8. Such efforts are not a bona fide offering and are not a legitimate noncommercial or fair use.
Respondent’s attempts to pass itself off as Complainant by copying Complainant’s own website and engaging in phishing efforts therein, supports findings that Respondent engaged in bad faith use and registration.
Respondent made no responses in this proceeding:
Respondent did not submit a response.
The Panel notes that Respondent registered the disputed domain name February 28, 2014.
Complainant established that it has rights and legitimate interests in the disputed domain name containing in its entirety its protected mark.
Respondent has no such rights to or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name and used it in bad faith.
The disputed domain name is confusingly similar to Complainant’s protected mark.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.).
Identical or Confusingly Similar:
Complainant uses the NOVAE mark in connection with insurance services. Complainant claims ownership of the NOVAE mark through registration with the EU’s OHIM (Reg. No. 5,180,211, registered January 4, 2008). The Panel agrees that Complainant’s OHIM registration sufficiently demonstrate rights in the NOVAE mark for purposes of Policy ¶ 4(a)(i). See Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)).
Complainant argues that the <novaeinsurance.com> domain name is confusingly similar to the NOVAE mark as the added term “insurance” relates to Complainant’s business. The Panel notes that the addition of generic top-level domain (“gTLD”) “.com” is irrelevant to the confusing similarity analysis. Further, the Panel finds that the addition of the term “insurance” actually serves to increase likelihood of confusion since the term is descriptive of Complainant’s insurance services. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that the <novaeinsurance.com> domain name is confusingly similar to the NOVAE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name containing in its entirety Complainant’s protected mark is confusingly similar to the mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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), and then the burden of proof shifts to Respondent to show it does have such 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.”).
Complainant sets out that it has no association with Respondent. Further, Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record lists “MHJ c/o Frank Curtis” as registrant. The Panel finds no basis in the record that Respondent is commonly known by the disputed domain name pursuant to 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that the <novaeinsurance.com> domain name resolves to a website that is a copy of a previous version of Complainant’s website. Complainant asserts that Respondent is using the resolving website to pass itself off as Complainant and to phish for user’s personal information. The Panel notes that the resolve website contains fields for users to input sensitive personal information. See Compl., at Attached Ex. 8. The Panel agrees that Respondent’s efforts to pass itself off as Complainant in furtherance of a phishing scheme is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
The Panel notes that Respondent has not alleged Respondent’s bad faith pursuant to the articulated provisions of Policy ¶ 4(b). However, the Panel also notes that Policy ¶ 4(b) is meant to be illustrative, and therefore Complainant may still be able to satisfy the requirements of Policy ¶ 4(a)(iii) under the totality of the circumstances. See Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Complainant argues that Respondent’s efforts to pass itself off as Complainant in furtherance of a phishing scheme reveals Respondent’s bad faith use and registration. The Panel recalls that the disputed domain name resolves to a copied version of Complainant’s old website where users can submit personal information. See Compl., at Attached Ex. 8. Prior panels have found evidence of bad faith use and registration under similar circumstances. See, e.g., Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). At present, the Panel agrees that Respondent’s impersonation of Complainant’s website to support a phishing scheme designed to retain user’s personal information amounts to bad faith pursuant to Policy ¶ 4(a)(iii); Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Accordingly, the Panel finds that Respondent engaged in bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <novaeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 16, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page