DECISION

 

The Hagerty Group, LLC v. Lyndon Sam

Claim Number: FA1907001851521

 

PARTIES

Complainant is The Hagerty Group, LLC (“Complainant”), represented by John Di Giacomo of Revision Legal, PLLC, Michigan, USA.  Respondent is Lyndon Sam (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <gagerty.com>, <hageety.com>, and <hagertu.com>, registered with LCN.COM Ltd.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 11, 2019; the Forum received payment on July 11, 2019.

 

On July 15, 2019, LCN.COM Ltd. confirmed by e-mail to the Forum that the <gagerty.com>, <hageety.com>, and <hagertu.com> domain names are registered with LCN.COM Ltd. and that Respondent is the current registrant of the names. LCN.COM Ltd. has verified that Respondent is bound by the LCN.COM Ltd. 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 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2019 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@gagerty.com, postmaster@hageety.com, postmaster@hagertu.com.  Also on July 16, 2019, 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 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 a response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the world’s largest insurer of classic and exotic automobiles, boats and motorcycles.

 

Complainant holds a registration for the HAGERTY trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,724,455, registered December 15, 2009.

 

Respondent registered the domain names <gagerty.com>, <hageety.com> and <hagertu.com> on June 21, 2018.

 

The domain names are all confusingly similar to Complainant’s HAGERTY trademark and service mark.

 

Respondent has not been commonly known by any of the domain names.

 

Complainant has not licensed or otherwise authorized Respondent to use the HAGERTY mark.

 

Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names.

 

Instead, Respondent uses them, for its commercial gain, to provide links to websites offering goods and services in competition with the business of Complainant.

 

Respondent has no rights to or legitimate interests in the domain names.

 

Respondent’s use of the domain names disrupts Complainant’s business.

 

Respondent knew of Complainant’s right in the HAGERTY mark prior to registering the domain names.

 

Respondent both registered and uses the domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and

 

(2)  Respondent has no rights to or legitimate interests in respect of the domain names; and

 

(3)  the same domain names were registered and are being used by Respondent in bad faith.

 

DISCUSSION

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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.    Respondent has no rights to or legitimate interests in respect of the domain name; and

iii.   the domain name has been registered and is being used by Respondent in bad faith.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate.  The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory.  See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true).  But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant has rights in the HAGERTY trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel, FA 1738536 (Forum August 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China).  See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):

 

[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.

 

Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s contested <gagerty.com>, <hageety.com> and <hagertu.com> domain names is confusingly similar to Complainant’s HAGERTY trademark and service mark.  The domain names are misspellings of Complainant’s mark each of which replaces a single letter in the HAGERTY mark and adds the generic Top Level Domain (“gTLD”) (“.com”). These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.  See, for example, Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum August 4, 2015):

 

The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark.  In spite of that omission the compared integers remain visually and aurally very similar and so [the] Panel finds them to be confusingly similar for the purposes of the Policy.

 

See also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum April 19, 2018):

 

The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.

 

This is because every domain name requires a gTLD or other TLD.

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <gagerty.com>, <hageety.com> and <hagertu.com> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests).  See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):

 

Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence).  Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the <gagerty.com>, <hageety.com> and <hagertu.com> domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the HAGERTY mark.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Lyndon Sam,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).  See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).  See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).

                                                            

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <gagerty.com>, <hageety.com> and <hagertu.com> domain names to resolve to a website providing links to other websites offering goods and services in competition with the business of Complainant and that Respondent profits from this employment of the domain names.  This use is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy.  See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1626253 (Forum July 29, 2015):

 

Respondent is using the disputed domain name to resolve to a web page containing advertising links to [a website offering] products that compete with those of Complainant.  The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

We are persuaded by the evidence that Respondent’s use of the contested <gagerty.com>, <hageety.com> and <hagertu.com> domain names, which we have found to be confusingly similar to Complainant’s HAGERTY trademark and service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names.  Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names.  See, for example, HEB Grocery Company, LP v. Nikolay Schastenko, FA 1789019 (Forum July 3, 2018):

 

Complainant provides screenshots of the domain name’s resolving website and claims, without contradiction[,] that Respondent commercially benefits from … [its employment of the domain name]. Therefore, Respondent’s use of the … domain name to attract users for commercial gain demonstrates bad faith per Policy ¶ 4(b)(iv).

 

We are also convinced by the evidence that Respondent knew of both Complainant and its rights in the HAGERTY mark at the time the <gagerty.com>, <hageety.com> and <hagertu.com> domain names were registered.  This further demonstrates Respondent’s bad faith in registering them.  See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):

 

The Panel … here finds actual knowledge [and therefore bad faith registration] through the name used for the domain and the use made of it.

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that each of the domain names <gagerty.com>, <hageety.com> and <hagertu.com> be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  August 9, 2019

 

 

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