RLI Insurance Company v. RLI Insurance Associates
Claim Number: FA1802001771038
Complainant is RLI Insurance Company (“Complainant”), represented by P. Stephen Fardy of Swanson, Martin & Bell, LLP, Illinois, USA. Respondent is RLI Insurance Associates (“Respondent”), represented by Mary Witzel of Dunlap Bennett & Ludwig, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rliinsassoc.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2018; the Forum received payment on February 8, 2018.
On February 8, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <rliinsassoc.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 February 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2018 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@rliinsassoc.com. Also on February 13, 2018, 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 March 5, 2018.
Additional Submission was received March 13, 2018 the Additional Submission does comply with Supplemental Rule 7.
On March 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A. Diaz (ret.) 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 is a property and casualty insurance company headquartered in Illinois while doing business in all fifty states. Complainant has used its registered mark in commerce since at least January 1, 1974. Complainant has rights in the RLI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,426,021, registered May 13, 2008). See Compl. Ex. A. Respondent’s <rliinsassoc.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic abbreviated terms “ins” and “assoc” to Complainant’s fully incorporated RLI mark.
Respondent has no rights or legitimate interests in the <rliinsassoc.com> domain name.
Respondent is not commonly known by the disputed domain name, despite the fact that the WHOIS information lists the registrant as “RLI Insurance Associates.” See Compl. Ex. B. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name resolves to a blank webpage, and there is no evidence that Respondent has used or intends to use the domain name.
Respondent registered and uses the <rliinsassoc.com> domain name in bad faith. Respondent does not use the domain name’s resolving webpage, which could disrupt Complainant’s business by leading consumers to believe that Complainant’s business does not exist. Further, Respondent undoubtedly knew of Complainant’s established goodwill and reputation, as both are providers of insurance products and services.
B. Respondent
Respondent’s domain name is not confusingly similar to Complainant’s RLI mark, as it adds the terms “ins” and “assoc,” giving it a different feel and meaning than Complainant’s mark. Further, Respondent’s use of RLI INSUANCE ASSOCIATES trademark predates Complainant’s rights in the RLI mark. See Resp. Annex 3.
Respondent does have rights and legitimate interests in the <rliinsassoc.com> domain name. Respondent’s registration of the domain name predates Complainant’s rights in the RLI mark, as Respondent registered the domain name in 2001, while Complainant registered its mark in 2008. Respondent is commonly known by the domain name, and has used the domain name in connection with a bona fide offering of goods and services since 2001. See Resp. Annex 3 (State Corporation Commission showing Respondent registered the RLI Inc. business in 1990).
Respondent registered the domain name in good faith. Complainant fails to sufficiently demonstrate that Respondent, the senior user, registered the <rliinsassoc.com> domain name in bad faith. Respondent and Complainant operate in different industry sectors, thus they are not competitors.
The Panel may note that Respondent first registered the <rliinsassoc.com> domain name on March 23, 2001.
C. Additional Submissions
The Complainant alleges it has used the RLI word mark at least as early as January 1, 1974; and in the absence of any registration of its own, Respondent should not be permitted to point to its own common law use allegedly dating back to 1990 while at the same time disregarding the Complainant’s common law use prior to obtaining the Original Registration.
Respondent has violated the requirements of ICANN Policy ¶¶ 4(a) (i), (ii), & (iii), ¶ 4(b)(iii) & (iv), and Policy ¶ 4(c) (iii).
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 claims rights in the RLI mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,426,021, registered May 13, 2008). See Compl. Ex. A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the RLI mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <rliinsassoc.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic abbreviated terms “ins” and “assoc” to Complainant’s fully incorporated RLI mark. The Panel also notes that the domain name adds the generic top-level domain (“gTLD”) “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <rliinsassoc.com> domain name is confusingly similar to the RLI mark under Policy ¶4(a)(i).
Further, while Respondent argues that its registration of the <rliinsassoc.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Additionally, while Respondent contends that the <rliinsassoc.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The 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 contends that Respondent has no rights or legitimate interests in the <rliinsassoc.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “RLI Insurance Associates” as the registrant. See Compl. Ex. B. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the RLI mark, despite the WHOIS information indicating otherwise. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); see also 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <rliinsassoc.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant contends that the disputed domain name resolves in a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which displays the error message “Hmm. We’re having trouble finding that site.” See Compl. Ex. C. Accordingly, the Panel finds that Respondent fails to actively use the disputed domain name and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <rliinsassoc.com> domain name in bad faith as Respondent does not use the domain name’s resolving webpage, which could disrupt Complainant’s business by leading consumers to believe that Complainant’s business does not exist. Failing to use a confusingly similar domain name can indicate bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This creates the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).) see also Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). As noted above, Complainant’s provided screenshot displays an error message on the website’s landing page. See Compl. Ex. C. Accordingly, the Panel agrees that Respondent fails to use the landing page for the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant claims that Respondent’s failure to use the domain name is done in bad faith under Policy ¶ 4(a)(iii). Inactively holding a confusingly similar domain name can evince bad faith registration and use per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant’s provided screenshot shows that the landing page displays an error message. See Compl. Ex. C. The Panel agrees that Respondent’s failure to use the resolving domain is in bad faith for the purposes of Policy ¶ 4(a)(iii).
In the Response, Respondent has failed to present any evidence or any credible assertion of its alleged legitimate use of the Disputed Domain. Rather, Respondent makes one conclusory statement claiming it has been using the domain in connection with bona fide offering of goods and services since 2001, but without providing any detail to support that statement. Respondent fails to describe what those goods or services are or how they are offered. Respondent gives no indication of how it uses the Disputed Domain. This failure to provide any evidence of active use of the Disputed Domain confirms that Respondent makes no bona fide offering of goods or services. See Chan Luu Inc. v. hao nian, FA1307001512653 (Forum Sept. 18, 2013).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rliinsassoc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon Nelson A Diaz (ret.), Panelist
Dated: March 14, 2018
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