Chubb Limited v. Cheng Qiao
Claim Number: FA1603001667485
Complainant is Chubb Limited (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Cheng Qiao (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acefinancialsolution.com>, registered with GoDaddy.com, LLC.
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2016; the Forum received payment on March 28, 2016.
On March 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <acefinancialsolution.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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 postmaster@acefinancialsolution.com. Also on March 29, 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.
A timely Response was received and determined to be complete on April 18, 2016.
On April 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran, 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
1. The domain name <acefinancialsolution.com> is confusingly similar to
Complainant’s ACE trademark;
<acefinancialsolution.com> domain name and;
B. Respondent
Respondent purchased an email and website building service at the same time that it purchased the domain, together with Respondent having registered a corporation in Washington State using the same name ACE, shows that Respondent has a legitimate interest in building business around the domain name <acefinancialsolution.com>. The reason Respondent chose ACE as the company and website name is due to the first names of its family members: Ada (wife), Cheng (husband) and Ethan (son). The vision is to build a family business that can last through generations.
Complainant owns and uses the ACE mark to provide strategic and alternative risk products, and excess property and aviation product liability insurance. Complainant’s rights in the ACE mark are established by its United States Patent and Trademark Office (“USPTO”) registration (Reg. No. 2,778,828, registered Nov. 4, 2003). Respondent’s <acefinancialsolution.com> is confusingly similar to Complainant’s ACE mark as it incorporates the mark in its entirety adding the descriptive terms “financial” and “solution” as well as the generic top-level domain (“gTLD”) “.com.” Respondent is not authorized to make use of Complainant’s ACE mark to offer competing and/or closely related services. Respondent uses Complainant’s mark in a logo that bears such resemblance to that of Complainant’s logo as to indicate that it is more than coincidental and evidences actual knowledge of Complainant’s mark.
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.
Complainant asserts that it owns and uses the ACE mark to provide strategic and alternative risk products, and excess property and aviation product liability insurance. Complainant claims rights in the ACE mark through its USPTO registration (Reg. No. 2,778,828, registered Nov. 4, 2003). See Compl., at Ex. 4. Registration with the USPTO has been consistently found by panels to establish a complainant’s rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
It is Complainant’s position that Respondent’s <acefinancialsolution.com> domain is confusingly similar to Complainant’s ACE mark because it incorporates the ACE mark in its entirety, while adding the descriptive terms “financial” and “solution,” as well as the generic top-level domain (“gTLD”) “.com.” The addition of terms that are descriptive of a complainant’s business have been held inadequate to distinguish a disputed domain name from a mark. See Abbott Laboratories v. Miles White, FA 1646590 (Nat. Arb. Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Furthermore, the addition of a gTLD such as “.com” does not distinguish a domain name from a mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Moreover, the term “financial” describes one of the types of services offered by Complainant and is included in its lists of services in its many trademark registrations – for example, see USPTO Reg. No. 2,956,379, which includes “related financial services, namely, financial guaranty and surety insurance and reinsurance, and financial risk management services….”
Therefore, this Panel finds that the domain <acefinancialsolution.com> is confusingly similar to a mark in which Complainant has rights under Policy ¶ 4(a)(i).
The Panel recognizes 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 (Nat. Arb. 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 (Nat. Arb. 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 argues that Respondent lacks rights in the <acefinancialsolution.com> domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. The Panel notes the WHOIS identifies “Cheng Qiao” as registrant of record. Comparing the registrant of record listed in the WHOIS with the disputed domain name has been held an acceptable method of determining if a respondent is commonly known as by the 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). The Panel therefore finds that “Cheng Qiao” is not similar enough to <acefinancialsolution.com>, and Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to promote a website which competes with services offered by Complainant. Complainant has provided the Panel with a screenshot of the resolving page for <acefinancialsolution.com>, which advertises “Mutual Funds,” “Rollover IRA,” and provides users with a number of insurance products. See Compl., at Attached Ex. 3. The Panel agrees that such competing commercial use is not protected by Policy ¶¶ 4(c)(i) or (iii). 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).”). The Panel agrees with Complainant that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant contends that in light of the sheer number registrations for Complainant's ACE mark around the world, it is inconceivable that Respondent could have registered the <acefinancialsolution.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Furthermore, the Panel finds that Respondent uses Complainant’s mark in a logo that bears such resemblance to that of Complainant’s logo as to indicate that the resemblance is more than coincidental and evidences actual knowledge of Complainant mark. Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acefinancialsolution.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David S. Safran, Panelist
Dated: April 25, 2016
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