Great American Insurance Company v. ZHICHAO YANG
Claim Number: FA1701001713127
Complainant is Great American Insurance Company (“Complainant”), represented by Peter T. Wakiyama, Pennsylvania, USA. Respondent is ZHICHAO YANG (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwgreatamericaninsurancegroup.com>, registered with Uniregistrar Corp.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2017; the Forum received payment on January 18, 2017.
On January 19, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <wwwgreatamericaninsurancegroup.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 January 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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@wwwgreatamericaninsurancegroup.com. Also on January 23, 2017, 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 February 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant provides financial, insurance, and real estate-related services in the United States. In conjunction with its business practices, Complainant uses the GREAT AMERICAN INSURANCE GROUP mark, along with other registered GREAT AMERICAN marks. Complainant registered its GREAT AMERICAN INSURANCE GROUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,644,054, registered Oct. 29, 2002). Respondent’s <wwwgreatamericaninsurancegroup.com> is confusingly similar to Complainant’s GREAT AMERICAN INSURANCE GROUP mark because it incorporates the mark in its entirety, eliminating the spaces, adding the letters “www,” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <wwwgreatamericaninsurancegroup.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the GREAT AMERICAN INSURANCE GROUP mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. Respondent’s <wwwgreatamericaninsurancegroup.com> resolves to a website containing click-through sites to goods and services in direct competition with Complainant, presumably for Respondent’s profit.
Respondent registered and is using <wwwgreatamericaninsurancegroup.com> in bad faith. The disputed domain name disrupts Complainant’s business by diverting internet users to a webpage with click-through links to Complainant’s competitors. Respondent registered and is using the disputed domain name within the meaning of bad faith under the Policy’s non-exclusivity clause, ¶ 4(b).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <wwwgreatamericaninsurancegroup.com> > 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.”).
Complainant provides financial, insurance, and real estate-related services in the United States. In conjunction with its business practices, Complainant uses the GREAT AMERICAN INSURANCE GROUP mark, along with other registered GREAT AMERICAN marks. Complainant registered the GREAT AMERICAN INSURANCE GROUP mark with USPTO (e.g., Reg. No. 2,644,054, registered Oct. 29, 2002). The consensus among Panels is that USPTO mark registrations are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel agrees and concludes that Complainant has sufficient rights to the GREAT AMERICAN INSURANCE GROUP mark.
Complainant contends that Respondent’s <wwwgreatamericaninsurancegroup.com> is confusingly similar to Complainant’s GREAT AMERICAN INSURANCE GROUP mark because it incorporates the mark in its entirety, eliminating the spaces, adding the letters “www,” and the “.com” gTLD. Panels have concluded that the addition of “www” and does not distinguish the domain name from the mark or overcome a finding of confusingly similar. Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016). Furthermore, “[e]limination of . . . the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).” U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007). The Panel determines that Respondent’s <wwwgreatamericaninsurancegroup.com> is confusingly similar to Complainant’s GREAT AMERICAN INSURANCE GROUP 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 (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 (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 attests that Respondent does not have rights or legitimate interests in <wwwgreatamericaninsurancegroup.com>. To support its argument, Complainant shows that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case indicates that Respondent used the “PRIVACYDOTLINK” privacy service to shield its identity. Panels have typically held that “in the absence of a Response, there is no evidence to indicate that Respondent might be known by . . . the domain name[ ].” Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015). Therefore, “[i]n light of Respondent’s failure to provide any evidence to the contrary, the Panel [may find] there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).” CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015).
Additionally, Complainant asserts that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant illustrates that Respondent’s <wwwgreatamericaninsurancegroup.com> resolves to a website containing click-through sites to goods and services in direct competition with Complainant, presumably for Respondent’s profit. Panels have found that “[a r]espondent’s use of . . . disputed domain names to feature parked hyperlinks containing links in competition with [a c]omplainant’s . . . services 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).” McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015). Here, the Panel agrees and finds that Respondent does not have rights or legitimate interests in <wwwgreatamericaninsurancegroup.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Complainant maintains that Respondent registered and is using <wwwgreatamericaninsurancegroup.com> in bad faith. The disputed domain name resolves to a webpage containing Complainant’s mark and links to competing websites. Complainant argues that the disputed domain name disrupts its business by diverting internet users to a webpage with click-through links to companies in direct competition with Complainant. “The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).” Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015). “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to . . . products and services that directly compete with Complainant’s business. Accordingly, [the Panel may find that] Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008).
Complainant asserts that its trademark registrations for the GREAT AMERICAN INSURANCE GROUP mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwgreatamericaninsurancegroup.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 24, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page