PGA Service Corporation v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1712001760980
Complainant is PGA Service Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegeneralcarinsurance.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on December 1, 2017; the Forum received payment on December 8, 2017.
On Dec 5, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <thegeneralcarinsurance.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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@thegeneralcarinsurance.com. Also on December 8, 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 January 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
For the past 20 years Complainant has used its THE GENERAL mark to offer its well-known and trusted automobile insurance agency services. Complainant has rights in its THE GENERAL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,958,636) on February 27, 1996. Respondent’s <thegeneralcarinsurance.com> domain name (the “Domain Name”), registered on May 3, 2007, is confusingly similar to Complainant’s THE GENERAL mark, as it incorporates the mark in its entirety, merely adding the descriptive term “car insurance” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, it resolves to a page of hyperlinks, some of which link to competitors of Complainant’s business. Further, Respondent is not commonly known by the Domain Name, nor does it operate a business or other organization under the THE GENERAL mark.
Respondent registered and is using the Domain Name in bad faith. Its use of the name to display a page of hyperlinks amounts to an attempt to confuse and divert Internet users for commercial gain. Further, Respondent clearly had actual knowledge of Complainant and its rights at the time it registered and subsequently used the Domain Name.
Respondent
Respondent did not submit a Response in this proceeding.
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 Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant’s rights in its THE GENERAL mark are based upon its registration of the mark with the USPTO (Reg. No. 1,958,636) on Febuary 27, 1996. See Complaint Exhibit E. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel finds that Complainant’s registration of the THE GENERAL mark with the USPTO is sufficient to establish its rights in that mark under Policy ¶ 4(a)(i).
Further, Respondent’s Domain Name is confusingly similar to the THE GENERAL mark, as it incorporates the mark in its entirety, merely adding the descriptive term “car insurance” and the “.com” gTLD. It also omits the spacing in the mark, but none of these changes is sufficient to distinguish the Domain Name from Complainanat’s mark for the purposes of Policy ¶ 4(a)(i). Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”), Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Complainant notes correctly that since it operates in the automobile insurance industry, Respondent’s addition of the term “car insurance” increases the confusing similarity of the Domain name.
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the THE GENERAL mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) the web site resolving from the Domain Name simply redirects visitors to other web sites, presumably for pay-per click revenues, and this cannot constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the Domain Name, and (ii) Respondent is not commonly known by the Domain Name. These allegations are supported by competent evidence. Respondent’s website under the Domain Name is a classic pay-per-click page displaying links which divert visitors—likely Complainant’s customers and potential customers—to other websites which are not associated with Complainant and, in some instances, are owned by its competitors in the automobile insurance agency industry. See, Complaint Exhibit F. UDRP Panels have found that leading consumers who are searching for a particular business to a site where the same or similar services provided by others are listed, is not a bona fide use. Health Level Seven International, Inc. v. McCarragher, Claim No. FA 1723981 (Forum, 2017) (“Respondent’s domain name resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain. The Panel therefore finds that Respondent has failed to use <hl7community.org> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”); Homer, TLC Inc. v. Lorna Kang, Claim No. FA573872 (Forum, 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”)
The WHOIS record associated with this case identifies the registrant as “Domain Admin/Domain Privacy Privacy Guard Sociedad Anónima Ltd”. See, Complaint Exhibit B. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Respondent’s use of the Domain Name as demonstrated by Complainant’s Exhibit F also supports a finding of bad faith. It is clear from that evidence that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's THE GENERAL mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent is obtaining commercial gain from its use of the Domain Name and its resolving web site. When a visitor to this web site clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to its web site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Id. The respondent’s website offered pay-per-click links to hunting equipment and related items. Id. The Panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its Domain Name results from pay-per-click links and alone constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Name and its web site results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who are forwarded from the links at the Domain Name. There is no other rational explanation for Respondent having registered and maintained the Domain Name and resolving it to a pay-per-click site with commercial links that relate directly to Complainant’s line of business. Respondent’s use of the Domain Name is commercial because the various companies forwarded from the website benefit from the subsequent interest and purchases of those who visit the site. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Using a Domain Name that trades upon the goodwill of a complainant for commercial gain is manifest evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Further, Respondent registered the Domain Name on May 3, 2007. See, WHOIS record, Complaint Exhibit B. Because of Respondent’s featuring of the exact form of Complainant’s registered mark on its web site, and because of the long history of that brand in commerce prior to the registration date, it is certain that Respondent had actual knowledge of Complainant’s mark when he registered the Domain Name. This has consistently been held to be evidence of bad faith registration. 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), Chevron Intellectual Property LLC v. Richard Bailey/Jacobs, FA 1588430 (Forum Dec. 9, 2014) (finding that respondent’s behavior of sending emails impersonating complainant demonstrated that the domain name was registered with complainant in mind), and Michelin North America, Inc. v. Innis, FA 1511296 (Forum Dec. 27, 2013) (holding that respondent’s registration of domain names that were confusingly similar to complainant’s famous marks evidenced that respondent had actual knowledge of complainant’s marks and rights and registered the domain names in bad faith under Policy ¶ 4(a)(iii)). It is obvious from the evidence that Respondent had actual knowledge of Complainant’s mark when it registered its Domain Name.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thegeneralcarinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 3, 2018
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