Combined Insurance Company of America v. Prahlad / N/A
Claim Number: FA1506001626033
Complainant is Combined Insurance Company of America (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Prahlad / N/A (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <combinedinsurance.xyz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2015; the Forum received payment on June 25, 2015.
On June 29, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <combinedinsurance.xyz> 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 July 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2015 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@combinedinsurance.xyz. Also on July 6, 2015, 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.
A timely Response was received and determined to be complete on July 8, 2015.
On July 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the COMBINED INSURANCE mark in connection with underwriting of life, accident, and health insurance. Complainant has registered the COMBINED INSURANCE mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Registry No. 3,435,758, registered May 27, 2008), establishing its rights in the mark. Complainant contends that Respondent’s <combinedinsurance.xyz> domain name is confusingly similar to the COMBINED INSURANCE mark as it incorporates the mark entirely and merely eliminates the spacing between words and adds the “.xyz” generic top-level domain (“gTLD”).
Complainant further contends that Respondent has no rights or legitimate interests in respect of the <combinedinsurance.xyz> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has been directing Internet users to Respondent’s competing business, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Compl., at Attached Ex. C (resolving website).
With respect to Respondent’s bad faith efforts, Policy ¶ 4(b)(iv) has been evidenced as Respondent has been operating a competing website and profiting from Internet confusion as to the source, sponsorship, affiliation, or endorsement of the website.
Complainant asserts that Respondent is using its trademark to divert Internet traffic to his own commercial website.
Complainant claims that following the initiation of this proceeding, Respondent modified his website to remove all the content from it. Complainant asserts that such action is evidence of Respondent’s bad faith.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
B. Respondent
Respondent contends that he merely operates an informational website which does not purport to commercially gain. The <combinedinsurance.xyz> domain name is similar to a blog website. Respondent alleges that he is commonly known by the disputed domain name as it provides information on mixed/multiple/packages of insurance and mortgages.
Respondent has not acted in bad faith attraction for commercial gain as Complainant contends, as Respondent has not intended to commercially gain. The disputed domain name is a combination of descriptive dictionary words which evince Respondent’s informational offerings on its <combinedinsurance.xyz> domain name that is the indicia of the good faith use.
According to the Complaint, Complainant, Combined Insurance Company of America, is an insurance provider that offers supplemental insurance products in North America, Europe, and Asia Pacific over decades and has acquired significant goodwill and trademark rights in and to its COMBINED INSURANCE marks throughout the U.S. and the world.
Complainant owns and uses the domain name <combinedinsurance.com> registered according to the records of the WHOIS database open for the public access on December 2, 1997 which resolves to Complainant’s website.
As established based on evidences provided in Exhibit B to the Complaint, Complainant is the holder of a series of the COMBINED INSURANCE trademarks protected under US trademark registrations:
- COMBINED INSURANCE & Design, U.S. trademark registration no. 3,435,758, reg. date May 27, 2008, appln. filing date October 16, 2007;
- COMBINED INSURANCE & Design, U.S. trademark registration no. 4,233,243, reg. date October 30, 2012, appln. filing date March 2, 2012;
- Combined & Design, trademark registration no. 2,431,474, reg. date February 27, 2001, appln. filing date February 24, 2000.
Complainant also refers to US Trademark Registration No. 669,093 for COMBINED INSURANCE COMPANY OF AMERICA filed on May 29, 1956 and claiming first use in commerce in 1940. However, the Panel cannot verify its validity as the USPTO TESS trademark database available online and open for the public access does not reflect the records for this trademark registration. Still, it is not the province of the UDRP to review validity of registrations issued by national governments.
Thus, the trademark registrations to which Complainant refer suffice to support Complainant’s registered trademark rights in a series of trademarks in which COMBINED INSURANCE element is the common element used in the mark on which consumers tend to focus their attention.
Although the COMBINED INSURANCE mark cannot be considered as the one which inherently possesses the high degree of distinctiveness. Still, distinctiveness of a sign is not an absolute and unchangeable factor. Common words from everyday language can also be highly distinctive if they communicate a meaning that is arbitrary in relation to the products on which they are used. The Combined insurance is the word combination which, due to the long and extensive use, has acquired the secondary meaning for those to whom it is addressed as it recognizable as indication of the source of the respective services.
Therefore, based on the records of the case and pursuant to the provisions of the Lanham Act, the Panel finds that Complainant has benefited from exclusive rights to its COMBINED INSURANCE mark at least since October 16, 2007 (the application filing date under US reg. no. 3,435,758, reg. date May 27, 2008).
According to the WHOIS registration profile the disputed domain name was registered on February 4, 2015 and prior to initiation of the administrative proceedings resolved to a website related to the insurance services. According to the WHOIS records, the registrant’s name is Prahlad. According to Exhibit C to the Complaint, Combined Insurance was listed as the name of one of the website pages which does not contain any disclaimer as to the website operator.
Upon the receipt of the written notice of the Complaint, all the content of the website has been removed from the website which has been deactivated.
There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant uses the COMBINED INSURANCE mark in connection with underwriting of life, accident, and health insurance. Complainant purportedly has registered the COMBINED INSURANCE mark with the USPTO (e.g., Registry No. 3,435,758, registered May 27, 2008), arguing that such registrations confer rights in the mark. There is a consensus amongst UDRP panels that USPTO registrations evince rights under Policy ¶ 4(a)(i), even where a complainant and respondent reside in different countries. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, this Panel finds Complainant has established Policy ¶ 4(a)(i) rights.
Next, Complainant argues that Respondent’s <combinedinsurance.xyz> domain name is confusingly similar to the COMBINED INSURANCE mark as it incorporates the mark entirely and merely eliminates the spacing between words and adds the “.xyz” gTLD. Panels have constantly agreed that gTLD additions have no bearing on whether a domain name may be seen as distinguished from a mark, and that elimination of spacing is irrelevant. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, this Panel agrees that Respondent’s elimination of spacing and addition of “.xyz” to Complainant’s COMBINED INSURANCE mark fails to distinguish it pursuant to Policy ¶ 4(a)(i).
Therefore, Complainant has met the burden of proving that Respondent’s domain name is identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant needs only to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant has established that the disputed domain name is identical or confusingly similar to its mark, and the record is clear that Complainant has not authorized Respondent to use its mark. Prior panel decisions such as Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025, have viewed this as a sufficient showing by a complainant under the Policy to shift the burden to the respondent to come forward with evidence demonstrating that it has rights or legitimate interests in the disputed domain name.
Respondent argues that it is commonly known by the disputed domain name as it provides information on mixed/multiple/packages of insurance and mortgages. Panels have often found respondents to be commonly known by a disputed domain name where they submit evidence establishing their websites as a reflection of their businesses.
The express text of paragraph 4(c)(ii) of the Policy indicates that to establish rights a respondent should have been commonly known by the "domain name". Furthermore, to benefit from paragraph 4 (c)(ii), the person or entity in whose name the domain name was registered must have been commonly known by the domain name by third parties before the domain name was registered or, in some decisions, before the filing of the complaint. (before registering domain name: See Compañнa de Radiocomunicaciones Mуviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH" D2000-0915, WIPO Oct. 5, 2000, before filing of the complaint: see Flügger A/S v. Pierre-Yves Gautschi, D2002-0337, WIPO May 24, 2002).
Complainant argues that Respondent has no rights or legitimate interests in respect of the <combinedinsurance.xyz> domain name as Respondent is not commonly known by the disputed domain name. As the relevant WHOIS information merely lists “Prahlad / N/A” as registrant of record, the Panel finds no basis in determining Respondent is commonly known by the <combinedinsurance.xyz> domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel finds that the use of the term “insurance” in the domain name may be permissible for the operator of the domain name which provides information on mixed/multiple/packages of insurance and mortgages and might constitute the plausible argument for the use of this word describing the type of business of the domain name holder in the domain name.
However, this dispute is not about the use of the term “insurance” alone, but about the use of the COMBINED INSURANCE name in which Complainant has trademark rights and which gained secondary meaning indicating the source of the service.
According to Complaint, Exhibit C, Respondent was well aware of Complainant’s business and history, and that due to the use of the COMBINED INSURANCE name by Complainant, the name obtained the secondary meaning and is associated in minds of consumers with Complainant.
Thus, Panel finds that Respondent cannot claim to have rights or legitimate interests in a domain name where Respondent has knowledge that its domain is confusingly similar to Complainant’s mark.
Next, Complainant further argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant asserts that Respondent has been directing Internet users to Respondent’s competing business, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent asserts that the websites provide free information about mixed/multiple/package of insurances and mortgages that implies, in his opinion, that there is no commercial use and his use of the domain name falls under the legitimate non-commercial or fair use per Policy ¶ 4(c)(iii). A demonstration of Respondent’s use is noted as included at Complainant’s Attached Exhibit C. Respondent contends that the <combinedinsurance.xyz> domain name operates in a similar manner to that of a blog website.
In general, panels recognize a preponderance of the evidence standard which means that a fact is proved when it is more likely than not that the fact is true.
Inasmuch as Respondent deleted all the content from the website to which the domain name <combinedinsurance.xyz> resolves and did not provide any screenshots, as well as other reliable evidences which might support his allegations of fair use per Policy ¶ 4(c)(iii), the Panel finds that mere allegations of fair use are not sufficient to prove the legitimate non-commercial or fair use and raise it as leverage in these administrative proceedings.
Thus, this allows the Panel to draw reasonable inferences of fact from Complainant’s allegations and further substantiation and deem them to be reliable. Thus, Panel tends to agree with Complainant’s assertion that Respondent’s disputed domain name attempts to compete with the offerings of Complainant.
The Panel finds that there is no bona fide use when the domain name is used to divert users to Respondent’s website through confusion. See Adobe Systems Incorporated v. Domain OZ Case No. D2000-0057 (WIPO March 22, 2000) (finding that the Panel determines that mere use of the disputed domain names to attract customers, for commercial gain, to Respondent’s website by creating consumer confusion with Complainant’s trademarks would not, if such use were demonstrated, establish rights or legitimate interests in the domain names on the part of Respondent).
Under these circumstances the requirements of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
The trademark COMBINED INSURANCE has been registered and used for many years worldwide and must be considered to be a mark which gained the high degree of recognition. Respondent has not contested this fact, and in the view of the Panel it is unlikely that Respondent did not know of the mark when registering the contested domain name.
Paragraph 4(b)(iv) of the Policy provides another example of circumstances which shall be evidence of registration and use in bad faith, namely:
By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating the likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant claims that by using the disputed domain name to give Internet users the impression that Respondent is partnered with Complainant, Respondent has created a likelihood of confusion, and is likely receiving commercial profit in the process. The Panel notes that Complainant’s COMBINED INSURANCE mark appeared as the name of one of the pages of the website. As it was discussed above, although Respondent deleted all the information from the website, the Panel holds an opinion that the use of a confusingly similar domain name in itself precludes conclusion on bona fide use of a domain name. Prior panels have found that use of a domain name to create a likelihood of confusion for commercial profit consist of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel has determined that the disputed domain name is confusingly similar to Complainant’s mark. A substantial element of that determination is that Respondent registered and used the disputed domain name for the purpose of directing Internet users to his commercial website by creating confusion regarding Complainant’s sponsorship of or affiliation with that site.
For the reasons already given, the Panel finds the respondent did act intentionally in this way. Further, it is likely Respondent was fully aware of the Complainants’ trade marks when it registered the domain name, since both parties are in the same line of business and Respondent used Complainant’s mark on its web site.
This conduct constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Considering all the facts and evidence the Panel therefore finds that the requirements of the Policy, Paragraph 4(a)(iii) are also fulfilled in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <combinedinsurance.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson Panelist
Dated: August 13, 2015
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