The Hagerty Group, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2106001953136
Complainant is The Hagerty Group, LLC (“Complainant”), represented by Amanda Osorio of Revision Legal, PLLC, Michigan, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hagertyisnurance.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2021; the Forum received payment on June 29, 2021.
On June 29, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hagertyisnurance.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 June 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2021 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@hagertyisnurance.com. Also on June 29, 2021, 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 July 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is an insurer of classic and exotic automobiles, boats, and motorcycles. Complainant has rights in the HAGERTY trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,724,455, registered Dec. 15, 2009). Respondent’s <hagertyisnurance.com> domain name is confusingly similar to Complainant’s HAGERTY trademark because it begins with the trademark, merely adding a misspelled version of the term “insurance” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <hagertyisnurance.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use the HAGERTY trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to spread malware to users.
Respondent registered and uses the <hagertyisnurance.com> domain name in bad faith. Respondent creates a likelihood of confusion with Complainant for commercial gain. As noted, Respondent also uses the disputed domain name to spread malicious software. Finally, Respondent had actual knowledge of Complainant’s rights in the HAGERTY mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner a number of trademark registrations including the
word HAGERTY, for example the following, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 3,724,455 HAGERTY (word), registered on December 15, 2009 for goods and services in Intl Classes 16, 35, 36, 41
- No. 2,914,153 HAGERTY (fig), registered on February 10, 2004 for services in Intl Class 36
- No. 2,779,514 HAGERTYPLUS (word), registered on November 4, 2003 for services in Intl Class 41
- No. 4,892,318 HAGERTY PLUS (word), registered on November10, 2015 for services in Intl Classes 35, 37, 39
- No. 5,205,570 HAGERTY. FOR PEOPLE WHO LOVE CARS (word), registered on May 16, 2017 for goods and services in Intl Classes 16, 35, 36, 41.
The Complainant has also provided evidence of several other US-based HAGERTY trademarks, as well as registrations in Canada, United Kingdom and European Union.
The disputed domain name <hagertyisnurance.com> was registered on April 23, 2021.
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”).
The Complainant asserts rights in the HAGERTY trademark based upon registration with the USPTO, as well as with the Canadian Intellectual Property Office (CIPO), the Intellectual Property Office (IPO) of UK, and the European Union Intellectual Property Office (EUIPO).
Registration of a trademark with a governmental authority such as the USPTO, is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See 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 provides evidence of registration with the USPTO (e.g., Reg. No. 3,724,455, registered Dec. 15, 2009). Thus, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hagertyisnurance.com> domain name is confusingly similar to Complainant’s HAGERTY trademark because it begins with the trademark HAGERTY, and then merely adding a misspelled version of the term “insurance” and the “.com” gTLD. Addition of a generic or descriptive term and a gTLD is insufficient to differentiate a domain name from the trademark it incorporates. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel agrees with Complainant and finds that Respondent’s domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant argues that Respondent does not have rights or legitimate interests in the <hagertyisnurance.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use the HAGERTY trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a trademark suggests that a respondent is not commonly known by a disputed domain name. Here, the WHOIS information of record lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant of the disputed domain name and no information of record suggests that Respondent is licensed or authorized to use the HAGERTY trademark. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <hagertyisnurance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use but rather uses the domain name to spread malware to users. Use of a domain name to disseminate malware is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant provides a screenshot of the page resolving at the disputed domain which distributes malware to users’ devices through a download link. Therefore, the Panel clearly finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent registered and uses the <hagertyisnurance.com> domain name in bad faith because Respondent creates a likelihood of confusion with Complainant for commercial gain. Use of a complainant’s trademark to create confusion for a respondent’s benefit may evidence bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant makes note of Respondent’s use of the HAGERTY trademark in the disputed domain name and Respondent’s use of the disputed domain to redirect Internet traffic for its own purposes. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also argues that Respondent uses the <hagertyisnurance.com> domain name to spread malicious software in bad faith. Use of a disputed domain name in connection with the dissemination of malware evidences bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As previously noted, Complainant provides a screenshot of the page resolving at the disputed domain which distributes malware to users’ devices through a download link. Thus, the Panel agrees that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the HAGERTY trademark when it registered the <hagertyisnurance.com> domain name. Actual knowledge of a complainant’s rights in a trademark may evidence bad faith per Policy ¶ 4(a)(iii) and can be shown by the entirety of circumstances surrounding registration and use of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that actual knowledge is shown from Respondent’s malicious use of the domain name, incorporation of Complainant’s mark in the domain name, and the fame and success of Complainant’s mark. Considering the circumstances in this case, and the use of the disputed domain name, the Panel agrees that actual knowledge is evident, and therefore finds bad faith 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 <hagertyisnurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 3, 2021
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