Generali Global Assistance, Inc. v. Host Master / Transure Enterprise Ltd
Claim Number: FA2304002042057
Complainant is Generali Global Assistance, Inc. (“Complainant”), represented by Yuo-Fong C. Amato of Gordon Rees Scully Mansukhani LLP, California, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <generalglobalassistance.com>, registered with Above.com Pty Ltd..
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on April 27, 2023; Forum received payment on April 27, 2023.
On April 27, 2023, Above.com Pty Ltd. confirmed by e-mail to Forum that the <generalglobalassistance.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 May 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2023 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@generalglobalassistance.com. Also on May 1, 2023, 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 May 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.
Complainant, Generali Global Assistance, Inc. offers financial and insurance services. Complainant asserts rights in the GENERALI mark based upon registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,731,611, registered November 10, 1992). See Compl. Ex. B. Respondent’s <generalglobalassistance.com> domain name is confusingly similar to Complainant’s GENERALI trademark because it includes the mark in its entirety and misspells it excluding the letter “I” and adding the generic words “global” and “assistance”, as well as the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <generalglobalassistance.com> domain name. Respondent is not licensed or authorized to use Complainant’s GENERALI mark and is not commonly known by the disputed domain name. Respondent used a privacy service to register the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to install malicious software and engages in typosquatting with the disputed domain name.
Respondent registered and uses the <generalglobalassistance.com> domain name in bad faith. First, Respondent has demonstrated a pattern of bad faith registration and use. Additionally, Respondent’s website is leading to possible malware. Further, Respondent is engaged in typosquatting. Finally, Respondent made use of a privacy shield.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of financial, insurance and related services.
2. Complainant has established its rights in the GENERALI mark based upon its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,731,611, registered November 10, 1992).
3. Respondent registered the <generalglobalassistance.com> domain name on December 20, 2022.
4. Respondent has caused the disputed domain name to be used to attempt to install malicious software and engage in typosquatting with the disputed domain name.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GENERALI mark based upon its registration of the mark with the USPTO (e.g., Reg. no. 1,731,611, registered November 10, 1992) and other trademark agencies. See Compl. Ex. B. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the GENERALI mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GENERALI mark. Complainant argues that the <generalglobalassistance.com> domain name is confusingly similar to Complainant’s GENERALI trademark because it includes the mark in its entirety and misspells it by excluding the letter “i” and adding the descriptive or generic words “global” and “assistance”, as well as the gTLD “.com”. Slight differences between domain names and registered marks, such as misspellings and the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Therefore, the panel may find that the <generalglobalassistance.com> domain name is confusingly similar to Complainant’s GENERALI mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GENERALI mark and to use it in its domain name, misspelling it by excluding the letter “i” and adding the descriptive or generic words “global” and “assistance”;
(b) Respondent registered the <generalglobalassistance.com> domain name on December 20, 2022;
(c) Respondent has caused the disputed domain name to be used to attempt to install malicious software and engage in typosquatting with the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <generalglobalassistance.com> domain name because Respondent is not licensed or authorized to use Complainant’s GENERALI mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Further a respondent’s use of a privacy service to register a disputed domain name supports a finding that the respondent is not commonly known by the disputed domain name. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Complainant provides WHOIS information, showing Respondent used a privacy service to register the disputed domain name. See Compl. Ex. F. Further, the registrar, ABOVE.COM PTY LTD., revealed the registrar as “Host Master / Transure Enterprise Ltd.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent also does not use the <generalglobalassistance.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name in an attempt to install malicious software on visiting devices. 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). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides screenshots of Respondent’s resolving webpage, which displays clickable options titled, “Bajaj Travel Insurance”, “Insurance Companies In”, and “Over 80 Travel Insurance” and appears to be related to malicious software. See Compl. Ex. G. As the Panel agrees, it finds that Respondent does not offer a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii);
(g) Complainant contends that Respondent’s registration and use of the <generalglobalassistance.com> domain name is an example of typosquatting. Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Here, Respondent’s <generalglobalassistance.com> domain name capitalizes on common typographical errors by deliberately excluding the letter “I” in the Complainant’s GENERALI mark. As the Panel agrees, it finds that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <generalglobalassistance.com> domain name in bad faith as Respondent has demonstrated a pattern of bad faith registrations of domain names that are confusingly similar to those owned by the Complainant. This conduct is evidence of bad faith under Policy ¶ 4(b)(ii). See Ditec International AB / Global Preservation Systems, LLC v. ADAM FARRAR / HOSTGATOR / FRITS VERGOOSSEN / DITEC INTERNATIONAL CORPORATION / Christopher Alison, FA 1763998 (Forum Feb. 1, 2018) (“Here, Respondent registered six domain names that all include Complainant’s DITEC mark. Therefore, the Panel finds that Respondent’s multiple registrations using the DITEC mark indicates bad faith registration and use per Policy ¶ 4(b)(ii).”). Here, Complainant provides no screenshot evidence of these continuous registrations, yet submits that Respondent is a serial infringer and continues to seek registration of domain names that are confusingly similar to those owned by the Complainant. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent registered and uses the <generalglobalassistance.com> domain name in bad faith because Respondent’s website is leading to possible malware. Distribution of malware is evidence of bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Here, Complainant provides screenshot evidence of Respondent’s resolving webpage which appears to distribute malware See Compl. Ex. G. The Panel therefore finds that Respondent registered and uses the <generalglobalassistance.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent registered and uses the <generalglobalassistance.com> domain name in bad faith as Respondent is engaged in typosquatting, which is evidence of bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent deletes the letter “I” in Complainant’s GENERALI mark in order to typosquat. Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Respondent has sought to conceal its identity by using a privacy shield. Use of a privacy shield is evidence of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, the privacy protection can be seen in the WHOIS information. See Compl. Ex. E. The Panel agrees and finds that Respondent registered and uses the <generalglobalassistance.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <generalglobalassistance.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 26, 2023
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