DECISION

 

Europ Assistance North America, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico

Claim Number: FA2311002070466

PARTIES

Complainant is Europ Assistance North America, Inc. ("Complainant"), represented by Gregory N. Brescia of Gordon Rees Scully Mansukhani LLP, New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <generalitravelisnurance.com>, ("Disputed Domain Name") registered with Godaddy.Com, Llc.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 10, 2023; Forum received payment on November 10, 2023.

 

On November 10, 2023, Godaddy.Com, Llc confirmed by e-mail to Forum that the <generalitravelisnurance.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 November 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@generalitravelisnurance.com. Also on November 13, 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 December 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 Disputed Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the GENERALI TRAVEL INSURANCE mark established by its ownership of the United States registered trademark details of which are described below, and use of the GENERALI TRAVEL INSURANCE mark since at least as early as December 1, 2018.

 

Complainant explains that it is a directly related division of Assicurazioni Generali S.p.A, which is a Fortune Global 500 Company, founded in 1831 and provides various insurance, banking and investment related services across the globe, serving more than 65.9 million customers.

 

Additionally, Complainant owns and uses a number of Internet domain names, most of which redirect users to its website at <generali.com> and owns the domain name <generalitravelinsurance.com> links directly to an independent destination.

 

Complainant alleges that the Disputed Domain Name <generalitravelisnurance.com> is confusingly similar to Complainant's GENERALI TRAVEL INSURANCE mark, arguing that it is identical to the mark except that the letters "n" and "s" are switched in the word element "insurance"  within the Disputed Domain Name.

 

Complainant argues that "[w]here a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate."  See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015); see also Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues/Fundacion Comercio Electronico, FA2011001921462 (Forum, Jan. 4, 2021) (finding that <webstetbank.com> was confusing similar to Complainant's WEBSTER BANK mark).

 

Complainant next alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name, arguing that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.

 

Referring to a screen capture of the website to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint, Complainant argues that it illustrates that Respondent's website displays clickable options titled, "International Travel Insurance", "Insurance Claims Processing", and "Domestic Travel Insurance" and appears to be related to malicious software.

 

Complainant submits that the screen capture illustrates that Respondent's website is not associated with any bona fide offering of goods or services and has the potential to cause harm to users.  See Google LLC v, Artem Polyakov, FA1910001868487 (Forum, Nov. 22, 2019) (finding that "[U]se of a disputed domain name to resolve to webpage that is not affiliated with a complainant and offers malware is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).").

 

In view of the foregoing, Respondent's actions remain problematic and are likely to cause harm to Internet users should their unlawful and malicious conduct not be addressed.

 

Complainant adds that Respondent has never been commonly known as "generali travel isnurance", and that the Whois information for the Disputed Domain Name names Respondent as "Private Registration". See Tercent Inc. v. Lee Yi, FA139720 (Forum, Feb. 10, 2003) (stating "nothing in Respondent's WHOIS information implies that Respondent is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

In a declaration exhibited in an annex to the Complaint, Counsel on record for Complainant, refers to an exhibited screen capture of the website to which the Disputed Domain Name resolves, and avers that on November 9, 2023, he accessed Respondent's website at <www.generalitravelisnurance.com>. He observed that Respondent's website was not secure and displayed clickable options titled, "International Travel Insurance", "Insurance Claims Processing", and "Domestic Travel Insurance", and submits that Respondent's website invites the user to click on suspicious links that could possibly contain malicious software.

 

Complainant contends that Respondent's use of <generalitravelisnurance.com> for such purposes is not a legitimate commercial or fair use. 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 . . . no[t] a non-commercial or fair use under Policy ¶4(c)(iii).").

 

Complainant further argues that Respondent is engaging in typosquatting by deliberately switching the "n" and the "s" within the word "insurance", which forms an element of the Disputed Domain Name; adding that Respondent is intentionally trying to confuse consumers.

 

Quoting from Complainant's own submissions in Europ Assistance North America, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico FA2309002062146,  Complainant submits:  "[t]yposquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark (or perhaps into a domain name or other mark related to or sponsored by the target trademark holder) and then registers the resulting string in a domain name. The domain name registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name's target trademark and/or, 2) in viewing the domain name will confuse the domain name with its target trademark. Duracell U.S. Operations, Inc. v. Feely Mac, FA2012001924346 (Forum, Jan. 6, 2021). "

 

 Complainant adds that "[t]yposquatting can provide evidence that a respondent has no rights or legitimate interests in a disputed domain name."  Citing Ceridian Dayforce Corporation v. Carolina Rodrigues/Fundacion Comercio Electronico, FA2010001919097 (Forum, Nov. 30, 2020).

 

Complainant next alleges that the Disputed Domain Name was registered and is being used in bad faith, arguing that "[t]yposquatting may act as independent evidence of bad faith."  Laboratory Corporation of America Holdings v. Domain Administrator, FA2010001918385 (Forum, Nov. 30, 2020). As established above, Respondent registered the <generalitravelisnurance.com> domain name by typosquatting and is using the domain name in bad faith.

 

Additionally, Complainant argues that Respondent's website leading to possible malware demonstrates that the Disputed Domain Name is being used in bad faith. See Twitter, Inc. v. Kiribati Media/Kiribati 200 Media Limited, FA1502001603444 (Forum, Mar. 19, 2015) (stating that "[U]sing 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).").

 

Moreover, Complainant adds that Respondent has sought to conceal its identity by using "Redacted for Privacy", and argues that it is implausible that Respondent may put the Disputed Domain Name to any good faith use. See HDR Global Trading Limited v. Ni Cary, FA2111001972574 (Forum Dec. 15, 2021).

Thus, a finding of bad faith is warranted.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

Complainant is the owner of GENERALI TRAVEL INSURANCE which it uses in connection with its ongoing business activities as a provider of insurance services.

 

By deed of assignment made on June 12, 2023, Complainant acquired ownership of:

 

United States of America service mark registration GENERALI TRAVEL INSURANCE, registration number 5,675,885, registered on the Principal Register on February 12, 2019, for services in international class 36.

 

Complainant has an established Internet presence and maintains websites at <www.generali.com> and <www.generalitravelinsurance.com>.

 

The Disputed Domain Name < generalitravelisnurance.com> was registered on November 1, 2023 and resolves to a website with apparently pay-per-click links to third party websites.

 

There is no information available about Respondent, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar to Forum in response to the request for details of the registration of the Disputed Domain Name for the purposes of this proceeding.

 

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

 

Complainant has provided convincing, uncontested evidence that it has rights in the •GENERALI TRAVEL INSURANCE mark established by its ownership of United States of America service mark registration GENERALI TRAVEL INSURANCE, registration number 5,675,885 acquired by deed of assignment made on June 12, 2023.

 

Confusing Similarity

The Disputed Domain Name < generalitravelisnurance.com> consists of Complainant's GENERALI TRAVEL INSURANCE mark in its entirety, albeit with the letters "s" and "n" in the switched in the element "insurance" in the Disputed Domain Name.

 

Complainant's GENERALI TRAVEL INSURANCE mark is clearly recognizable as being the dominant and only element in the Disputed Domain Name, except for the generic Top Level Domain ("gTLD") extension <.com>.

 

The gTLD extension <.com> does not prevent a finding of confusing similarity, because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,

 

This Panel finds therefore that the Disputed Domain Name is confusingly similar to the GENERALI TRAVEL INSURANCE mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the Disputed Domain Name arguing that

·       Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services;

·       the screen capture of the website to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint, illustrates that Respondent's website displays clickable options titled, "International Travel Insurance", "Insurance Claims Processing", and "Domestic Travel Insurance" and appears to be related to malicious software;

·       use of a disputed domain name to resolve to webpage that is not affiliated with a complainant and offers malware is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).");

·       Respondent's website is not associated with any bona fide offering of goods or services and has the potential to cause harm to users;

·       Respondent's actions continue to remain problematic and are likely to cause harm to users should their unlawful and malicious conduct not be addressed;

·       Respondent has never been commonly known as "generali travel isnurance", and the Whois information for the Disputed Domain Name names the registrant as "Private Registration";

·       Counsel on record for Complainant avers in a declaration which is exhibited in an annex to the Complaint: "[o]n November 9, 2023, I accessed Respondent's <generalitravelisnurance.com>. Respondent's website is not secure and displays clickable options titled, "International Travel Insurance", "Insurance Claims Processing", and "Domestic Travel Insurance". Attached hereto as Exhibit "F" is a true and correct copies of Respondent's website. Respondent's website invites the user to click on suspicious links that could possibly contain malicious software";

·       Respondent's use of <generalitravelisnurance.com> for such purposes is not a legitimate commercial or fair use;

·       Respondent is engaging in typosquatting by deliberately switching the "n" and the "s" within the word "insurance", which forms the Disputed Domain Name;

·       Respondent is using the Disputed Domain Name in an intentional attempt to confuse consumers.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant has adduced clear and convincing, uncontested evidence that it has registered service mark rights in the GENERALI TRAVEL INSURANCE mark, having been assigned ownership of Complainant became the registered owner of the above-described United States of America service mark registration GENERALI TRAVEL INSURANCE, registration number 5,675,885, by deed of assignment made on June 12, 2023.

 

The Disputed Domain Name < generalitravelisnurance.com> was registered on November 1, 2023. On the date on which the Disputed Domain Name was chosen and registered, Complainant's registered trademark rights had been established, including by use of the name and mark on Complainant's website, a screen capture of which is exhibited in an annex to the Complaint.

 

GENERALI TRAVEL INSURANCE is a distinctive mark albeit with descriptive elements. The word GENERALI is the distinctive element, and in combination with the descriptive elements the almost identical Disputed Domain Name points to Complainant's business providing travel insurance products.

 

While Complainant relies in its evidence of reputation on the goodwill of its associated company which has long provided investment related services across the globe, and has more than 65.9 million customers, it has not quantified the goodwill which Complainant itself claims to have established.

 

Nonetheless is clear from the composition of the Disputed Domain Name that the registrant at the time of registration, had in mind, Complainant's business carried on under the GENERALI TRAVEL INSURANCE mark.

 

It is most improbable that the Disputed Domain Name which is almost identical, was chosen for any reason other than its similarity to Complainant's mark.

 

This Panel finds therefore that on the balance of probabilities the Disputed Domain Name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's goodwill and reputation in the GENERALI TRAVEL INSURANCE mark.

 

This finding is supported by the fact that the Disputed Domain Name <generalitravelisnurance.com> is a conscious misspelling of Complainant's mark and the registration and use of the Disputed Domain Name constitutes typosquatting as alleged by Complainant.

 

Complainant has further alleged, but has provided no evidence whatsoever, that the Disputed Domain Name is being used as the address for a website that downloads malware to unsuspecting Internet visitors.

 

An allegation of distribution of malware is a very serious matter and should not be lightly alleged without adequate supporting evidence.

 

The evidence adduced is that the Disputed Domain Name resolves to a parked website with what appears to be links to third party websites. On the balance of probabilities Respondent is receiving pay-per-click revenue when Internet users click the links.

 

This Panel finds therefore that by using the Disputed Domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on your web site or location.

 

Furthermore, as already found, on the balance of probabilities the Disputed Domain Name which was chosen and registered specifically as a misspelling of Complainant's constitutes typosquatting, and it follows that Complainant's use of the Disputed Domain Name constitutes use in bad faith for the purposes of the Policy.

 

As this Panel has found that the Disputed Domain Name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <generalitravelisnurance.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                       

________________________________________

James Bridgeman SC,

Panelist

Dated: December 6, 2023