Chubb Limited v. Da Clone
Claim Number: FA1807001798295
Complainant is Chubb Limited (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Da Clone (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aceinsurance.co>, registered with NameCheap, Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:
Ho Hyun Nahm, Esq. as Chair
The Honourable Neil Anthony Brown QC; and
Terry F. Peppard, Esq. as Panelists
Complainant submitted a Complaint to the Forum electronically on July 24, 2018; the Forum received payment on July 24, 2018.
On July 24, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <aceinsurance.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@aceinsurance.co. Also on July 25, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ho Hyun Nahm, Esq., (Chair), The Honourable Neil Anthony Brown QC and Terry F. Peppard, Esq. as Panelists.
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
i) Complainant, Chubb Limited, provides a broad range of insurance and reinsurance products through operations in the U.S. and numerous other countries. Complainant has rights in the ACE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,778,828, registered Nov. 4, 2003). See Compl. Ex. B. Respondent’s <aceinsurance.co> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s ACE mark, and is only differentiated by the addition of the descriptive term “insurance.”
ii) Respondent lacks rights and legitimate interests in the <aceinsurance.co> domain name. Respondent is not authorized to use Complainant’s ACE mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent diverts users to the disputed domain name’s resolving website which offers competing goods and services.
iii) Respondent registered and uses the <aceinsurance.co> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s resolving website where Respondent attempts to pass off as Complainant to sell competing goods and services. Respondent also attempted to conceal its identity through the use of a privacy service. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the ACE mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response.
1. The <aceinsurance.co> domain name was created on April 27, 2018.
2. Complainant established rights in the ACE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,778,828, registered Nov. 4, 2003).
3. The disputed domain name’s resolving website offers insurance related services.
4. The disputed domain name’s resolving website displays the ACE 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.
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 claims to have rights in the ACE mark based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registration for the ACE mark (e.g., Reg. No. 2,778,828, registered Nov. 4, 2003). See Amend. Compl. Ex. B. Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the ACE mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <aceinsurance.co> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the ACE mark while adding a descriptive term. While Complainant does not argue this, Respondent also appears to have added the “.co” country code top-level domain (“ccTLD”) to the mark. Adding a descriptive term and a ccTLD to a complainant’s mark may not sufficiently mitigate any confusing similarity between the disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).. Here, Respondent wholly incorporates the ACE mark, adds the descriptive term “insurance”, and incorporated the “.co” ccTLD. Complainant contends the “insurance” is a descriptive term that refers to the services offered by Complainant. Accordingly, the Panel concludes that Respondent’s <aceinsurance.co> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <aceinsurance.co> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the ACE mark. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “Da Clone.” Furthermore, no information of the record indicates that Respondent was authorized to use Complainant’s ACE mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges the Respondent fails to use <aceinsurance.co> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain name to offer competing insurance services of a different company. Using a disputed domain name to offer goods and services that compete directly with the goods and services offered by a complainant may not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 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).”). Complainant provides screenshots of the disputed domain name’s resolving website which offers insurance related services. See Amend. Compl. Ex. D. Furthermore, Complainant provides emails from Respondent regarding its insurance business. See Amend. Compl. Ex. C. Accordingly, the Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent registered and uses the <aceinsurance.co> domain in bad faith. Specifically, Complainant contends Respondent uses the disputed domain name to pass off as Complainant and sell competing services of another insurance company. Attempting to pass off as a complainant to sell goods or services in direct competition with those of the complainant is evidence of bad faith per Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant provides a screenshot of Respondent’s website which sells insurance related goods and services. See Compl. Ex. D. The screenshot also shows that the disputed domain name resolves to a webpage that displays the ACE mark in the upper left hand corner. Id. Complainant argues Respondent is using the confusingly similar, disputed domain name to pass off as Complainant to confuse users into buying insurance for commercial gain. Id. Accordingly, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had actual and constructive knowledge of Complainant’s rights in the ACE mark prior to registering the <aceinsurance.co> domain name. While constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge of a complainant’s mark may be evidence of bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant claims that due to Respondent’s use of the mark at the disputed domain name to pass off as Complainant in order to sell competing insurance, Respondent had actual knowledge of the ACE mark.
Complainant contends that with authority to operate in over 150 countries, it essentially operates in every major insurance market in the world under the ACE mark. Using the mark ACE continuously and extensively in commerce and in promotions since at least 1985, In 2003, Complainant wrote $14,637 million (U.S. dollars) in gross insurance premiums, had over 8,900 employees worldwide, and held $49.5 billion in total assets. As such, the Panel finds that Complainant's ACE mark was widely known prior to the registration of the disputed domain name.
The Panel infers, due to the fame of Complainant's mark and manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, thereby supporting a finding of bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aceinsurance.co> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., (Chair)
The Honourable Neil Anthony Brown QC and
Terry F. Peppard, Esq. (Panelists)
Dated: August 27, 2018
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