SELECTIVE INSURANCE GROUP, INC. v. Gregory Murphy
Claim Number: FA1701001714649
Complainant is SELECTIVE INSURANCE GROUP, INC. (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Gregory Murphy (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <selectivegroups.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2017; the Forum received payment on January 27, 2017.
On January 31, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <selectivegroups.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 has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@selectivegroups.com. Also on February 2, 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 March 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a national provider of insurance products and services. Complainant uses the SELECTIVE mark in conjunction with its business practices. Complainant registered the SELECTIVE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,824,614, registered Mar. 1, 1994). See Compl., at Attached Annex 5. Respondent’s <selectivegroups.com> is confusingly similar to Complainant’s SELECTIVE mark because it incorporates the mark in its entirety, adding the generic term “groups” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the<selectivegroups.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the SELECTIVE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <selectivegroups.com> resolves to a webpage identical to Complainant’s <selective.com>. See Compl., at Attached Ex 7.
Respondent registered and is using the <selectivegroups.com> domain name in bad faith. Respondent uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). The disputed domain name is presumed to be a doppelganger website that phishes for Complainant’s customers’ personal and financial information. Respondent registered <selectivegroups.com> with actual and constructive notice of Complainant and its rights to the SELECTIVE mark.
B. Respondent
Respondent did not submit a response, however, the Panel notes that Respondent submitted an email in which it states, “To whom it may concern—I have provided all this information. I would like to transfer the domain purchased. I have a business to run, and would like to access my e-mails, etc, This is slowing me down, and unethical. I purchased and have every right to this domain. Please unlock, and allow me to go about my business. If I need to retain council please let me know.”
1. Complainant is a United States company engaged in the provision of insurance products and services.
2. Complainant registered the SELECTIVE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,824,614, registered Mar. 1, 1994) and has established its trademark rights by that means.
3. Respondent registered the <selectivegroups.com> domain name on January 10, 2017.
4. Respondent’s <selectivegroups.com> domain name resolves to a webpage identical to Complainant’s website at www.selective.com.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is a national provider of insurance products and services. Complainant uses the SELECTIVE mark in conjunction with its business practices. Complainant submits that it registered the SELECTIVE mark with USPTO (e.g., Reg. No. 1,824,614, registered Mar. 1, 1994). See Compl., at Attached Annex 5. The general consensus among UDRP Panels is that USPTO 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 finds that Complainant’s USPTO registration is sufficient to show rights in the SELECTIVE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SELECTIVE mark. Complainant contends that Respondent’s <selectivegroups.com> domain name is confusingly similar to Complainant’s SELECTIVE mark because it incorporates the mark in its entirety, adding the generic term “groups” and the “.com” gTLD. Panels typically find that the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s SELECTIVE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SELECTIVE mark and to use it in its domain name adding the generic word “groups”;
(b) Respondent registered the domain name on January 10, 2017;
(c) Respondent’s <selectivegroups.com> domain name resolves to a webpage identical to Complainant’s website at www.selective.com;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <selectivegroups.com> domain name. To support its argument, Complainant demonstrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Gregory Murphy.” See Compl., at Attached Ex. 2. Complainant submits that this statement is false as neither the Complainant nor its CEO, Gregory Murphy, authorized or approved this domain name registration. Most often, panels find WHOIS information to be overwhelming evidence that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Absent a response or evidence to the contrary, the Panel finds that Respondent is not commonly known by the <selectivegroups.com> domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Complainant illustrates that Respondent’s <selectivegroups.com> domain name resolves to a webpage passing itself off as Complainant with the intent to confuse users and obtain personal information. See Compl., at Attached Ex. 7. Panels have found that a respondent lacks 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. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Therefore, the Panel finds that Respondent’s attempt to pass itself of as Complainant is 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 Respondent has used the disputed domain name to present users with a website that was nearly identical to Complainant’s website.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name. In particular, Respondent’s email referred to above does not establish that Respondent has a right or legitimate interest in the disputed domain name
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant maintains that Respondent registered and is using the <selectivegroups.com> domain name in bad faith. The Panel notes that, Respondent’s <selectivegroups.com> domain name resolves to a website identical to Complainant’s website at www.selective.com. See Compl., at Attached Exs. 6–7. Complainant argues that Respondent uses this nearly identical website to confuse Internet users in attracting them to its own website for commercial gain. Complainant submits that such behavior indicates bad faith under Policy ¶ 4(b)(iv). Generally, panels have agreed with such arguments. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant illustrates that the disputed domain name appears to be a doppelganger website that phishes for Complainant’s internet customers’ personal and financial information. See Compl., at Attached Ex. 7. Panels have concluded that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s . . . website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use. Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004). The Panel, then, finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent registered the <selectivegroups.com> domain name with actual and constructive notice of Complainant and its rights to the SELECTIVE mark. Complainant claims that it registered its trademarks long before Respondent registered the disputed domain name and the link between Respondent’s website and Complainant’s business is so distinct, Respondent must have registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the mark. However, the trend in UDRP proceedings is to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). In the present case, the Panel finds that the contents of the domain name’s website provides evidence that Respondent knew enough about Complainant’s business to give it the idea to create such a similar website. As such, the Panel finds that Respondent actually knew of Complainant’s rights in the mark and as such Respondent acted in bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the SELECTIVE mark and in view of the conduct that Respondent
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <selectivegroups.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 07, 2017
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