American Fidelity Assurance Company v. yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service)
Claim Number: FA1710001752218
Complainant is American Fidelity Assurance Company (“Complainant”), represented by Emma Winer of Foley Hoag LLP, Massachusetts, USA. Respondent is yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service) (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americnfidelity.com>, <amerianfidelity.com> and <americanfideltiy.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2017; the Forum received payment on October 4, 2017.
On October 9, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <americnfidelity.com>, <amerianfidelity.com> and <americanfideltiy.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 October 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@americnfidelity.com, postmaster@amerianfidelity.com, and postmaster@americanfideltiy.com. Also on October 12, 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 November 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, American Fidelity Assurance Company, was founded in 1960 and offers its customers a variety of insurance and financial services. Complainant uses its AMERICANFIDELITY.COM mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 4,397,234, registered Sep. 3, 2013). See Compl. Annex 6. Respondent’s <americnfidelity.com>, <amerianfidelity.com> and <americanfideltiy.com> domain names are confusingly similar to Complainant’s mark because each domain name fully incorporates a slightly misspelled version of the AMERICANFIDELITY.COM mark.
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its AMERICANFIDELITY.COM mark in any fashion, and Respondent is not commonly known by any of the disputed domain names. Respondent is not using the <americnfidelity.com>, <amerianfidelity.com> and <americanfideltiy.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to divert Internet users from Complainant’s website to Respondent’s parked website. See Compl. Annexes 12-14.
iii) Respondent registered and is using the infringing domain names in bad faith. Respondent attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by diverting Internet users from Complainant’s website to Respondent’s parked website. See Compl. Annexes 12-14. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the AMERICANFIDELITY.COM mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the resolving websites to feature competing pay-per-click hyperlinks. Further, Respondent’s bad faith is not mitigated by posting a disclaimer on the resolving webpages. Id. Finally, Respondent had actual knowledge of Complainant’s rights in the AMERICANFIDELITY.COM mark, engaged in typosquatting, and utilized a privacy service to conceal its identity.
B. Respondent
Respondent did not submit a Response. The Panel notes that the disputed domain names were each registered on January 22, 2017. See Compl. Annex 1-3.
Preliminary Issue: Required Language of Complaint
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent targeted an English language trademark by its confusingly similar domain name, and operated a website with English language text directed to the English-speaking world. Further, the translation of all documents in the proceeding to the Chinese language would result in Complainant incurring unnecessary additional costs and a delay in proceedings. The Panel decides to continue the case with the English-language submission of the Complaint. See Rule 11.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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 contends it registered its AMERICANFIDELITY.COM mark with the USPTO (e.g., Reg. No 4,397,234, registered Sep. 3, 2013). See Compl. Annex 6. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has rights in the AMERICANFIDELITY.COM mark.
Complainant alleges that Respondent’s <americnfidelity.com>, <amerianfidelity.com> and <americanfideltiy.com> are confusingly similar to Complainant’s mark because each domain name fully incorporates a slightly misspelled version of the AMERICANFIDELITY.COM mark. Slight differences in spelling do not negate confusing similarity between a domain name and a mark. See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Here, Respondent’s <americnfidelity.com> and <amerianfidelity.com> domain names differ from Complainant’s mark by the deletion of a single letter from the term “american.” Respondent’s <americanfideltiy.com> domain name differs from Complainant’s mark because two letters, “l” and “i”, are transposed to create a common spelling error. Therefore, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s mark.
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 asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims it has not licensed or otherwise authorized Respondent to use its AMERICANFIDELITY.COM mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially where a privacy service has been engaged. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel notes that a privacy service was used by Respondent. The WHOIS information of record for each domain name lists “yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service).” See Compl. Annexes 1-3 (WHOIS information for disputed domain names). Therefore, the Panel holds that Respondent is not commonly known by any of the infringing domain names per Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <americnfidelity.com>, <amerianfidelity.com> and <americanfideltiy.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to divert Internet users from Complainant’s website to Respondent’s portal website. Use of a domain name to direct internet users to a portal site featuring pay-per-click hyperlinks is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Here, Complainant provided screenshots of each of the disputed domain names’ resolving webpages. See Compl. Annex 12-14. The screenshots indicate that Respondent is using the domain names to resolve to parked webpages that feature pay-per-click hyperlinks related to Complainant’s insurance business such as “Insurance Coverage,” “American Auto Insurance” and “American Fidelity Insurance.” Id. As such, the Panel may hold that Respondent is not using any of the disputed domain names to make a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain names.
Complainant asserts that Respondent registered and is using the infringing domain names in bad faith. Respondent attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by diverting Internet users to Respondent’s websites which feature competing hyperlinks. Registration and use of a domain name for the purpose of disrupting a complainant’s business can evince bad faith conduct on the part of a respondent. See Independent Insurance Agents & Brokers of America, Inc. v. Liqian, FA1409001582252 (Forum Nov. 10, 2014) (concluding that because the complainant operated in the insurance business and the respondent was using the disputed domain name to display hyperlinks that ultimately promoted insurance companies and quote rates, the respondent was disrupting the complainants business and demonstrating bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)). Here, Complainant provided screenshots of the disputed domain names’ resolving webpages featuring insurance-related hyperlinks. See Compl. Annex 12-14. Therefore, the Panel concludes that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant alleges that Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the AMERICANFIDELITY.COM mark by using the resolving websites to feature competing hyperlinks. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of its website may evince bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Here, screenshot evidence indicates that Respondent used the confusingly similar domain names to host competing hyperlinks and presumably benefited from the misleading domain names by receiving click-through-fees. See Compl. Annex 12-14. Therefore, the Panel concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that Respondent is responsible for the content of the resolving webpage even though the webpages display a disclaimer indicating that the hyperlinks are served automatically by a third party and the domain name owner has no relationship with the advertisers. Use of a disclaimer does not mitigate evidence of bad faith registration and use. See Auxilium Pharm., Inc. v. Patel, FA 642141 (Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Accordingly, the Panel disregards Respondent’s employment of a disclaimer on the resolving webpages as irrelevant for the purposes of Respondent’s alleged bad faith.
Additionally, Complainant alleges Respondent had actual knowledge of Complainant’s rights in the AMERICANFIDELITY.COM mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name can adequately evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). A respondent is presumed to have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s AMERICANFIDELITY.COM mark has been in use since 2012, and Complainant has operated as “American Fidelity Assurance Company” for nearly 60 years. See Compl. pg. 3. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <americnfidelity.com>, <amerianfidelity.com> and <americanfideltiy.com> domain names were registered and subsequently used.
Moreover, Complainant contends that Respondent’s use of typosquatting is prima facie evidence of bad faith. A complainant may use typosquatting arguments to further establish a respondent’s bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Respondent either removed one character from Complainant’s mark, or transported two letters. As such, the Panel may hold that Respondent has acted in bad faith under Policy ¶ 4(a)(iii) by creating slight discrepancies in Complainant’s registered mark.
Finally, Complainant contends that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst 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”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it agrees that Respondent has registered and used the disputed domain names 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 <americnfidelity.com>, <amerianfidelity.com>, and <americanfideltiy.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 20, 2017
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