PolicyGenius, Inc. v. Impex Support
Claim Number: FA1808001799963
Complainant is PolicyGenius, Inc. (“Complainant”), represented by Scott Smiley of The Concept Law Group, P.A., Florida, USA. Respondent is Impex Support (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <policygenius-admin.com>, registered with Godaddy.Com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2018; the Forum received payment on August 3, 2018.
On August 7, 2018, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <policygenius-admin.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 August 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@policygenius-admin.com. Also on August 17, 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 September 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is in the business of offering educational and brokerage services in the field of insurance and employee benefit plans. Complainant is using and has been using the mark “PolicyGenius” since at least as early as 2013. Complainant has rights in the POLICYGENIUS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,604,683, registered Sep. 16, 2014). See Compl. Ex. A. Respondent’s <policygenius-admin.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds a hyphen and the term “admin.”
ii) Respondent has no rights or legitimate interests in the <policygenius-admin.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also 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, Respondent uses the domain name to impersonate Complainant in a fraudulent email scheme to provide fraudulent, non-existent insurance policies for its own commercial gain. See Compl. Ex. B.
iii) Respondent registered and uses the <policygenius-admin.com> domain name in bad faith as Respondent uses the domain name to impersonate Complainant in a fraudulent email scheme to provide fraudulent, non-existent insurance policies for its own commercial gain. See Compl. Ex. B.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Forum received emails from Respondent which are identified in this proceeding as “Other Correspondence.” In these emails, Respondent purports to consent to the transfer of the domain name <policygenius-admin.com>, stating in relevant part, ‘I have been trying to transfer the domain but am not able to do so because it is locked for whatsoever reason. Godaddy sold this domain to me. If it is not right to buy such domain, it should have never been sold and now they are least bothered in sorting this out with us.’
1. Respondent registered the <policygenius-admin.com> domain name on June 1, 2018.
2. Complainant has established rights in the POLICYGENIUS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,604,683, registered Sep. 16, 2014).
3. Email communications with Progressive Insurance show that Respondent uses the disputed domain name to offer insurance policies to consumers.
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."
Preliminary Issue: Consent to Transfer
The Forum received emails from Respondent which are identified in this proceeding as “Other Correspondence.” In these emails, Respondent purports to consent to the transfer of the domain name <policygenius-admin.com>, stating in relevant part, ‘I have been trying to transfer the domain but am not able to do so because it is locked for whatsoever reason. Godaddy sold this domain to me. If it is not right to buy such domain, it should have never been sold and now they are least bothered in sorting this out with us.’
Respondent seems to consent to transfer <policygenius-admin.com> to Complainant. However, after the initiation of this proceeding, Godaddy.Com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel could forego the traditional UDRP analysis and order an immediate transfer of <policygenius-admin.com>. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Despite such Respondent’s consent, the Panel finds it appropriate to proceed to a substantive decision on the merits because i) while consenting to the requested remedy, Respondent has expressly disclaimed any bad faith; ii) Complainant has not agreed to accept such consent; and iii) the Panel wishes to be certain that Complainant has shown that it possesses relevant trademark rights. See ¶ 4.10 ‘WIPO Jurisprudential Overview 3.0’ (stating despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.).
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 rights in the POLICYGENIUS mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,604,683, registered Sep. 16, 2014). 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) (“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 POLICYGENIUS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <policygenius-admin.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds a hyphen and the term “admin.” The Panel also sees that the domain name incorporates the “.com” generic top-level domain (“gTLD”) and finds that similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that the <policygenius-admin.com> domain name is confusingly similar to the POLICYGENIUS mark under 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 contends that Respondent has no rights or legitimate interests in the <policygenius-admin.com> domain name. Where a response is lacking, 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 “Impex Support” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the POLICYGENIUS mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). 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 <policygenius-admin.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as it attempts to impersonate Complainant and phish for information from consumers via email. Complainants may use evidence of phishing to demonstrate a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides copies of email communications with Progressive Insurance, which shows that Respondent allegedly uses the domain name to offer insurance policies to consumers via email, presumably for commercial gain as the policies are not valid. See Compl. Ex. B. As such, the Panel finds that Respondent attempts to phish for users’ information, failing to use the domain name in a manner which would confer rights and legitimate interests in the name per Policy ¶¶ 4(c)(i) or (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.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent uses the disputed domain name to fraudulently send emails to Complainant’s customers, hoping to commercially benefit through offering fraudulent, non-valid insurance policies. Conducting a phishing scheme through fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As noted above, Complainant provides copies of email communications with Progressive Insurance, which shows that Respondent allegedly uses the domain name to offer insurance policies to consumers via email, presumably for commercial gain, as the policies are not valid. See Compl. Ex. B. Accordingly, the Panel agrees that Respondent’s apparent phishing scheme does not amount to any good faith use per 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 <policygenius-admin.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 12, 2018
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