Chubb INA Holdings Inc. v. Janice Reading
Claim Number: FA1908001858786
Complainant is Chubb INA Holdings Inc. (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Janice Reading (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chubbinsur.com>, registered with Google LLC.
The undersigned certify 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.
Katalin Szamosi has been appointed as the Chair of the three-member panel along with Aaron B. Newell and Debrett Gordon Lyons as co-panelists (together, the “Panel”).
Complainant submitted a Complaint to the Forum electronically on August 22, 2019; the Forum received payment on August 22, 2019.
On August 27, 2019, Google LLC confirmed by e-mail to the Forum that the <chubbinsur.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 September 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@chubbinsur.com. Also on September 3, 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 September 30, 2019, pursuant to Complainant's request to have the dispute decided by a three-member panel, the Forum appointed Katalin Szamosi as the Chair of the three-member panel along with Aaron B. Newell and Debrett Gordon Lyons as co-panelists.
Having reviewed the communications records, 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
Complainant is the world’s largest publicly traded property and casualty insurance company and the largest commercial insurer in the U.S.. Complainant presently provides a broad range of insurance and reinsurance products under the mark CHUBB to insureds worldwide through operations in the U.S. and 53 other countries and territories. Complainant, through its predecessors in interest, was formed in 1967 and was listed on the New York Stock Exchange in 1984. With over 31,100 employees worldwide, Complainant serves property and casualty insurance customers from some 650 offices around the globe. Complainant uses the mark CHUBB continuously and extensively in commerce and in promotions for more than 130 years in connection with insurance services.
Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <chubbinsur.com> domain name is identical to Complainant’s CHUBB mark. In support of this Complainant asserts that Complainant has rights in the CHUBB mark through its trademark registrations around the world in 53 countries, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 998,842, registered Nov. 19, 1974). Complainant in support of the trademark protection of the CHUBB mark submitted a list of the trademarks around the world under Exhibit B. Complainant asserts that Complainant is the owner of exclusive rights in the marks which the evidenced service mark registrations substantiate therefore it establishes Complainant’s prima facie case and shifts the burden onto Respondent to rebut such an assumption.
Additionally Complainant argues that Respondent’s <chubbinsur.com> domain name is confusingly similar to Complainant’s CHUBB mark as it incorporates the mark in its entirety, along with the descriptive term “insur” and a “.com” generic top-level domain (“gTLD”). According to the Complainant the addition of the term “insur” serves only to further confuse and divert consumers as it is undoubtedly descriptive of the insurance services offered by the Complainant under the CHUBB family of marks, which makes it probable that many of Complainant’s potential and existing customers will mistype Complainant’s mark when searching for its products and services on the Internet, including from Complainant’s <chubbinsured.com> and <chubbinsurance.com> domains, and thus will be diverted to Respondent’s website.
Respondent has no rights or legitimate interests in the <chubbinsur.com> domain name. Complainant contends that that the use of the <chubbinsur.com> domain name indicates an exclusive connection with Complainant however Respondent is not licensed or authorized to use Complainant’s CHUBB mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to scam Complainant’s customers into paying fraudulent invoices. Complainant asserts that it is not possible for Respondent to present evidence that Respondent has ever acquired any trademark rights in the domain name, because Complainant’s CHUBB family of marks has been extensively used since as early as 1882, a date over one hundred thirty-five years prior to Respondent’s acquisition of the domain in 2019.
Complainant asserts that Respondent registered and uses the <chubbinsur.com> domain name in bad faith, by using the disputed domain name to pass off as Complainant through emails in order to scam customers into paying fraudulent invoices. Complainant argues in support of the bad faith registration that Respondent also displays Complainant’s registered CHUBB family of marks in emails sent from a <chubbinsur.com> email address in order to create the impression that the emails are authorized by, endorsed by, or more specifically is, in fact, Complainant. Complainant is of the view that such actions evidences bad faith registration and use. Respondent also registered the disputed domain name under a privacy service. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the CHUBB mark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides insurance services by reference to the trademark CHUBB which is the subject, inter alia, of USPTO Reg. No. 998,842 from November 19, 1974;
2. Complainant has not authorized Respondent to use the CHUBB trademark or to register any domain name incorporating the trademark; and
3. the disputed domain name was registered in 2019 and has been used to send emails either creating the impression that they are authorized by or endorsed by the Complainant, or creating the misbelief that the Respondent is in fact the Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, 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). Complainant therefore has rights since it provides proof of its registration of the trademark CHUBB with the USPTO, a national trademark authority.
Complainant next argues that the disputed domain name is confusingly similar to the CHUBB mark, as the name incorporates the mark in its entirety, along with a descriptive term “insur” (being an obvious reference to the either “insurance” or “insure”) and a “.com” gTLD. The Panel finds that such changes are not sufficient to distinguish the domain name from the trademark (see, for example, Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). The Panel determines that the <chubbinsur.com> domain name is confusingly similar to the CHUBB mark per Policy ¶ 4(a)(i).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
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, for example, 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)); 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 has no rights or legitimate interests in the <chubbinsur.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CHUBB mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
The public identity of the domain name owner is shielded by a privacy service but in consequence of these proceedings, the Registrar identified “Janice Reading” as the domain name registrant. Accordingly, there is no indication that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <chubbinsur.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <chubbinsur.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses an email address associated with the disputed domain name to deceive Complainant’s customers into paying fraudulent invoices. Use of a disputed domain name to phish for users’ personal or financial information may demonstrate a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). Complainant provides copies of emails and an invoice sent from an email address associated with the disputed domain name in support of its contentions. The Panel finds that passing off as Complainant through emails does not constitute a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) (see, for example, Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”); Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name).
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant contends that Respondent’s impersonation of Complainant in emails designed to fraudulently deceive customers into paying false invoices evinces Respondent’s bad faith. The submitted evidence regarding the emails sent from an email address hosted at the <chubbinsur.com> domain name compels the Panel to conclude that Respondent acted in bad faith regarding the registration and use of the disputed domain name per Policy ¶¶ 4(b)(iii) and/or (iv) (see, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chubbinsur.com> domain name be TRANSFERRED from Respondent to Complainant.
Katalin Szamosi, Aaron B. Newell and Debrett Gordon Lyons
Dated: October 14, 2019
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