Federated Mutual Insurance Company v. David Michael / Acounting
Claim Number: FA1611001703578
Complainant is Federated Mutual Insurance Company (“Complainant”), represented by David D. Axtell of Stinson Leonard Street LLP, Minnesota, USA. Respondent is David Michael / Acounting (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fedmic.com>, registered with Tucows Domains Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2016; the Forum received payment on November 18, 2016.
On November 18, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <fedmic.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2016 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 email@example.com. Also on November 18, 2016, 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 December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant provides insurance protection for its customers. In promotion of its business efforts, Complainant has registered the FEDERATED INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,617,934, registered Oct. 16, 1990). See Compl., at Attached Ex. A. Respondent’s <fedmic.com> is a combination of the FEDERATED INSURANCE mark with Complainant’s name and the addition of the “.com” generic top-level domain.
Respondent has no rights or legitimate interests in <fedmic.com>. Respondent is not affiliated with Complainant, nor can it be considered commonly known by <fedmic.com>. Further, Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use—instead, Respondent has combined Complainant’s trademarks as well as the marks and expressions of third parties in operating a scam website. Respondent uses <fedmic.com> to phish for Internet users’ personal information. See Compl., at Attached Ex. F.
Respondent registered and used <fedmic.com> in bad faith. Respondent has engaged in the same type of Internet scam in the past—indicating bad faith per Policy ¶ 4(b)(ii). Further, Respondent engages in its fraudulent scheme to create a false impression—and therefore create confusion—for the purpose of trading off the goodwill associated with Complainant’s marks and likeness, which is bad faith under Policy ¶ 4(b)(iv). Lastly, Respondent’s use of a privacy shield to inhibit the fair and efficient resolution of these proceedings goes towards a finding of nonexclusive Policy ¶ 4(a)(iii).
Respondent failed to submit a Response in this proceeding. The disputed domain name, <fedmic.com>, was registered on May 3, 2016.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in or to the disputed domain name; and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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 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 (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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark, FEDERATED INSURANCE. The Complainant has adequately pled it interests in and to that trademark. Respondent arrives at the disputed domain name by merely abbreviating Complainant’s trademark and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
Complainant argues that Respondent’s <fedmic.com> is a combination of the FEDERATED INSURANCE mark with Complainant’s name, Federated Mutual Insurance Company, and the addition of the “.com” generic top-level domain. Reducing a complainant’s mark to an acronymical representation or simply a shortened version has been considered confusingly similar. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (FORUM Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).
As such, the Panel finds that <fedmic.com> is confusingly similar to Complainant’s FEDERATED INSURANCE mark and/or its name, Federated Mutual Insurance Company.
The Panel also finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is also not apparently permitted to use the FEDERATED INSURANCE trademark or corporate name of Complainant. The WHOIS lists “David Michael / Acounting” as registrant. As such, the Panel finds that Respondent is not commonly known by <fedmic.com> under Policy ¶ 4(c)(ii).
Further, it appears that Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent has allegedly combined Complainant’s trademarks as well as the marks and expressions of third parties in operating a scam website. Operating a scam website or a phishing website imputes a lack of rights and legitimate interests under the Policy. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (FORUM Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Here, Complainant argues that Respondent uses <fedmic.com> to phish for Internet users’ personal information. See Compl., at Attached Ex. F (displaying fields where Internet users can input personal information). However, Complainant has not provided support for several assertions made in the Complaint; namely, the purported contact with CHJ Management, and any copyright infringement engaged in by Respondent.
Given the totality of the circumstances, however, the Panel finds that there is no evidence in the record to support the claim that Respondent has any rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent registered and used the disputed domain name, <fedmic.com>, in bad faith. Respondent has apparently engaged in the same type of Internet scam in the past—indicating bad faith per Policy ¶ 4(b)(ii). Complainant claims that similar circumstances were involved in a 2014 UDRP case engaged in by a third party against Respondent, but Complainant has not provided any evidence of that case. Past UDRP cases where findings were adverse to a respondent may impute bad faith in an instant case. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (FORUM Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). While there is no evidence or citation to support Complainant’s assertion of a pattern of bad faith, the Panel finds the claim reasonable and furthers totality of the circumstances indicating that Respondent has engaged in bad faith use and registration.
Further, Complainant argues that Respondent engages in its fraudulent scheme to create a false impression—and therefore create confusion—for the purpose of trading off the goodwill associated with Complainant’s marks and likeness, which is bad faith under Policy ¶ 4(b)(iv). Phishing schemes have encountered findings of Policy ¶ 4(b)(iv) bad faith. See Hess Corp. v. GR, FA 770909 (FORUM Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Attached Exhibit F displays screenshots of Respondent’s website which includes several areas where Internet users can input personal information. As this appears to be a plain phishing scheme, the Panel finds that Respondent is intending to divert Internet traffic to acquire personal information of confused individuals. As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Lastly, the Panel notes that Respondent has engaged a privacy service, and in doing so withheld identifying information. The consensus view among panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Complainant argues that moments after the Complaint was filed, the privacy service was removed, necessitating an amendment to the Complaint, and that it is not clear whether this tactic was used to muddle these proceedings. Therefore, as it appears that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, the Panel finds that Respondent has registered and used the disputed domain name 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 <fedmic.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: December 14, 2016
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