The Travelers Indemnity Company v. Clarion / The Tech
Claim Number: FA1612001706855
Complainant is The Travelers Indemnity Company (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Clarion / The Tech (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <traveilers.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2016; the Forum received payment on December 12, 2016.
On December 14, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <traveilers.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 December 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 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@traveilers.com. Also on December 14, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. The Travelers Indemnity Company, owns and licenses intellectual property to various affiliated Travelers companies. Complainant and its affiliated companies provide personal property and casualty insurance in the United States and other countries. Complainant has rights to the TRAVELERS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,611,053, registered Aug. 28, 1990).
2. Respondent’s <traveilers.com> is confusingly similar, as it contains the TRAVELERS mark, merely differing through the addition of the generic top-level domain (“gTLD”) “.com,” and the insertion of a letter “i” to create an intentional misspelling of the mark.
3. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by <traveilers.com> and Complainant has not authorized or licensed Respondent to use the TRAVELERS mark in any way. Respondent does not make an active use of the domain name, rather, the domain name is being used to provide an email address used to conduct fraudulent transactions and impersonate an employee of Complainant.
4. Respondent registered and is using <traveilers.com> in bad faith. Respondent’s fraudulent passing off activity disrupts complainant’s business, also demonstrating bad faith.
5. Additionally, Respondent uses the domain to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s TRAVELERS mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s activities.
6. Further, Respondent had actual knowledge of Complainant’s rights in the TRAVELERS mark at the time Respondent registered the domain name. Finally, Respondent’s failure to make an active use of the domain name is additional evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TRAVELERS mark. Respondent’s domain name is confusingly similar to Complainant’s TRAVELERS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <traveilers.com> domain name and that Respondent registered and uses the domain name 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 has rights in the TRAVELERS mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,611,053, registered Aug. 28, 1990). See Paisley Park Enters. v. Lawson, FA 384834 (FORUM Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel holds that Complainant’s registration of the TRAVELERS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <traveilers.com> is confusingly similar to Complainant’s TRAVELERS mark, as the domain name contains the mark in its entirety, differing only though the addition of the generic top-level domain (“gTLD”) “.com,” and the insertion of a letter “i” to create an intentional misspelling of the mark. Appending the gTLD “.com” to a mark is irrelevant in a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (FORUM Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Similarly, addition of a single letter to a mark in which a complainant has rights does not distinguish a domain name from the mark in an analysis of confusing similarity. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (FORUM Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (FORUM Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Accordingly, the Panel finds Respondent’s <traveilers.com> is confusingly similar to Complainant’s TRAVELERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <traveilers.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (FORUM Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <traveilers.com> domain name as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the TRAVELERS mark in any way. The WHOIS information identifies Respondent as “clarion” with “the tech.” Additionally, there is nothing in the record to indicate that Respondent has been authorized to register a domain name using the Complainant’s mark. 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); 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 under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <traveilers.com> domain name.
Respondent’s registration and use of the domain name to conduct fraudulent transactions and impersonate an employee of Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(b)(i) and 4(b)(iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (FORUM Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses.”).
Respondent has used the <traveilers.com> domain name to host email addresses used to impersonate an employee of a company affiliated with Complainant in order to solicit wire transfers purportedly on behalf of Complainant or one of its affiliates. The emails feature signature blocks claiming the sender is a “Receivable Account Manager” with “Travelers.” This constitutes passing off behavior in furtherance of a fraudulent for-profit scheme; thus, Respondent is not using the <traveilers.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(b)(i) and 4(b)(iii).
Complainant also contends that Respondent’s failure to make an active use of the disputed domain name—i.e. inactive holding—constitutes further evidence of Respondent’s lack of rights or legitimate interests in the domain name. Such inactive holding can be evidence of a respondent’s lack of rights per Policy ¶¶ 4(c)(i) and/or 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (FORUM July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The disputed domain name does not resolve to an active website; an Internet user attempting to navigate to the domain name receives an error message. See Compl., at Attached Ex. 8. The Panel finds Respondent’s failure to make an active use of the disputed domain name evinces a lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of the domain name for fraudulent activity, as described above, unfairly disrupts Complainant’s business, evidence of bad faith under Policy ¶ 4(b)(iii). The Panel agrees. A finding of bad faith under Policy ¶ 4(b)(iii) can be based upon evidence of disruption of a complainant’s business, regardless of whether the respondent could be considered a direct competitor. See Yahoo! Inc. v. N/A / asghar hasan zadeh, FA 1517435 (FORUM Sept. 27, 2013) (“Complainant asserts that although Respondent may not be a competitor of Complainant, the fact that Respondent’s activities are in opposition to Complainant is sufficient to define Respondent as a competitor under the UDRP. . . The Panel finds that Respondent is disrupting Complainant’s legitimate business, proving bad faith use and registration under Policy ¶ 4(b)(iii).”). The Panel finds Respondent’s activity to be sufficiently disruptive to Complainant’s business thus constituting bad faith per Policy ¶ 4(b)(iii).
Complainant also claims Respondent uses the domain to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s TRAVELERS mark. Bad faith can be found under Policy ¶ 4(b)(iv) where a domain name is being used to pass off as a complainant for commercial gain. See DatingDirect.com Ltd. v. Aston, FA 593977 (FORUM Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (FORUM July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). The record supports Complainant’s assertion. The Panel agrees Respondent’s registration and use of the <traveilers.com> domain name constitutes an attempt to pass off for commercial gain and finds Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's TRAVELERS mark and Respondent’s use of the <traveilers.com> domain name to pass itself off as an employee of a company affiliated with Complainant, it is inconceivable that Respondent could have registered the <traveilers.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees that most certainly Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <traveilers.com> 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 (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 <traveilers.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 19, 2017
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