SELECTIVE INSURANCE GROUP, INC. v. Hung Nguyen
Claim Number: FA2210002016748
Complainant is SELECTIVE INSURANCE GROUP, INC. (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Hung Nguyen (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choosesigi.com>, registered with NameCheap, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on October 19, 2022; Forum received payment on October 19, 2022.
On October 19, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <choosesigi.com> 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 October 20, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2022 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@choosesigi.com. Also on October 20, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it has used the trademark SELECTIVE since 1985 to provide insurance and related services. The SELECTIVE brand is known for its high-quality products and services in the field of insurance. As a result of exclusive, continuous and extensive use by Complainant, the trademark SELECTIVE has acquired significant goodwill, and over the years came to represent quality and excellence in the full range of Complainant’s goods and services. Complainant registered the marks SELECTIVE and SELECTIVE INSURANCE in the US in, respectively, 1993 and 2006. SIGI is an acronym for Complainant’s business name and is commonly used as an identifier for Complainant in relevant markets including insurance agents and insurance customers since 1994. As a result of longstanding use, Complainant has acquired common law trademark rights in the mark SIGI.
Complainant alleges that the disputed domain name is confusingly similar to its SIGI mark because it incorporates the mark in its entirety, merely adding the generic term “choose” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and is not licensed to use Complainant’s SIGI mark. Respondent fails to use the disputed domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, the resolving website mimics Complainant’s website and invites users to enter their personal information. Complainant was contacted by a telecommunications company in September 2022 alerting that the disputed domain may be a part of a scheme to defraud consumers. An entity that is either Respondent, or acting on behalf of Respondent, was going to launch a large-scale SMS campaign to send text messages to millions of U.S. consumers, allegedly on behalf of Complainant. The SMS campaign would apparently direct recipients to the disputed domain and sought to induce them to use the resolving website.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent creates a false impression of affiliation with Complainant and engages in phishing. Additionally, Respondent had actual knowledge of Complainant’s rights in the SIGI mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark SIGI, with rights dating back to 1994, and uses it to market insurance and related services.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s SELECTIVE mark and logo, mimics Complainant’s website, and invites users to enter their personal information.
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”).
Complainant asserts common law rights in its SIGI mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant presents evidence of longstanding use of the SIGI mark, as of 1994. Therefore, the Panel finds that Complainant established common law rights in its SIGI mark, with rights predating the registration of the disputed domain name.
The disputed domain incorporates Complainant’s SIGI mark in its entirety and merely adds the generic term “choose” and the “.com” generic top-level domain (“gTLD”). Per Policy ¶ 4(a)(i), such changes are not sufficient to distinguish a domain name from a mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is nor is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name identifies the registrant as “Hung Nguyen”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Both the disputed domain name itself, and the content of the resolving website, falsely suggest that they are associated with the Complainant. That is not a fair or legitimate use of the disputed domain name. Indeed, according to paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner …”. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, D2014-1359 (WIPO, Oct. 28, 2014). Consequently the Panel finds that Respondent has failed to use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Further, the resolving website invites users to enter their personal information. This can constitute phishing, and this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Smith & Wesson Inc. v. julietcbn / juliet cbn FA2208002008469 (Forum Sept. 8, 2022) (finding that the “Respondent uses its confusingly similar at-issue domain name to pass off as Complainant in furtherance of a phishing scheme. Respondent deceives potential customers into believing there is an affiliation with Complainant by mimicking aspects of Complainant’s genuine website, including Complainant’s mark and logo as well as other proprietary material, on a website addressed by the confusingly similar <smith-wessonarms.com> domain name. The scheme is aimed at stealing internet users’ personal information and/or money. Respondent’s use of the at-issue domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii).).
For all the above reasons, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, consumers visiting the resolving website are likely to be confused as to whether Respondent and/or its website is affiliated in some way with Complainant; and/or the disputed domain name or the associated website are endorsed, authorized, or sponsored by Complainant, none of which are true. This is a form of bad faith use of the disputed domain name. See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Forum June 3, 2003) (bad faith established “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”).
Further, also as already noted, the resolving website appears to be used in furtherance of a phishing scheme. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <choosesigi.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 17, 2022
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