DECISION

 

New York Life Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico

Claim Number: FA2309002063021

PARTIES

Complainant is New York Life Insurance Company ("Complainant"), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <newyorkliferaarp.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 22, 2023; Forum received payment on September 22, 2023.

 

On September 25, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <newyorkliferaarp.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 October 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@newyorkliferaarp.com. Also on October 2, 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 October 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <newyorkliferaarp.com> domain name is confusingly similar to Complainant's NEW YORK LIFE mark.

 

2.       Respondent does not have any rights or legitimate interests in the <newyorkliferaarp.com> domain name.

 

3.       Respondent registered and uses the <newyorkliferaarp.com> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant offers insurance services and holds a registration for the NEW YORK LIFE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,750,395, registered February 2, 1993).

 

Respondent registered the <newyorkliferaarp.com> domain name April 18, 2023, and uses it primarily to provide pay-per-click links. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the NEW YORK LIFE mark through registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).")

 

Respondent's <newyorkliferaarp.com> domain name uses Complainant's NEW YORK LIFE mark and adds the letter "r", "aarp" - a reference to another entity, and the ".com" gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See New York Life Insurance Company v. Manlidy / GNN, FA2304002041169 (Forum May 24, 2023) (finding the .com gTLD insufficient to distinguish nylifecareers.com from the NYLIFE mark and stating "The gTLD '.com' does not serve to distinguish the Domain Name from the Complainant's mark, which is the distinctive component of the Domain Name").  Therefore, the Panel finds that Respondent's <newyorkliferaarp.com> domain name is confusingly similar to Complainant's NEW YORK LIFE mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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)); see also 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 contends that Respondent lacks rights and legitimate interests in the <newyorkliferaarp.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the NEW YORK LIFE mark. The WHOIS information for the disputed domain name lists the registrant as "Carolina Rodrigues / Fundacion Comercio Electronico". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

Complainant contends that Respondent fails to use the <newyorkliferaarp.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain name resolves to pay-per-click links. Using a disputed domain name to provide links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vance Int'l, Inc. v. Abend, FA 970871 (Forum, June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides a screenshot showing that the disputed domain name resolves to pay-per-click links. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant claims that Respondent registered and uses the <newyorkliferaarp.com> domain name in bad faith by using it to provide pay-per-click links. The Panel agrees and finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).  See CFA Properties, Inc. v. El Mariache/ Mariache Corp, FA 1660175 (Forum March 8, 2016) (finding bad faith registration and use because "Respondent used the <chickfilafoundation.org> domain name to attract Internet users for commercial gain because the resolving website contains links to third party businesses, from which Respondent presumably receives pay-per-click fees".)

 

Complainant argues that Respondent's typosquatting also demonstrates bad faith. Registering a disputed domain name that intentionally introduces a typographical error in a mark evinces bad faith registration and use under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) ("Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name's registrant.") Accordingly, the Panel finds bad faith typosquatting under Policy ¶ 4(a)(iii).

 

Complainant also claims that Respondent had knowledge of Complainant's rights in the NEW YORK LIFE mark when it registered the disputed domain names based on the fame of the mark. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). New York Life Insurance Company v. Carolina Rodrigues, FA2308002058031 (Forum September 15, 2023) ("Respondent's prior knowledge of Complainant's mark is evident from the notoriety of Complainant's NEW YORK LIFE trademark.")

 

The Panel also finds that Respondent, "Carolina Rodrigues / Fundacion Comercio Electronico", has a history of adverse UDRP decisions against it showing a general pattern of bad faith. See e.g. New York Life Insurance Company v. Carolina Rodrigues, FA2308002058031 (Forum September 15, 2023) ("Respondent's history of bad faith registration and use reveals a pattern of domain name abuse that is indicative of Respondent's bad faith").

 

Finally, Complainant cites Respondent's general offer to sell the disputed domain name for more than out-of-pocket costs as further evidence of bad faith. The Panel agrees and finds bad faith under Policy ¶ 4(b)(i).  See Caterpillar Inc. v. Holding Account, FA1903001835712 (Forum April 21, 2019) ("Respondent's apparent offer to sell the domain name for an amount which is in excess of its out-of-pocket costs indicates Respondent's bad faith registration and use of the domain name per Policy ¶ 4(b)(i).")

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <newyorkliferaarp.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: October 27, 2023