DECISION
Novum Underwriting Partners LLC v. wsa wsd / dsfw asfw
Claim Number: FA2401002080480
PARTIES
Complainant is Novum Underwriting Partners LLC ("Complainant"), represented by Shannon V. McCue of CueCards Legal, Ohio, USA. Respondent is wsa wsd / dsfw asfw ("Respondent"), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <novumuv.com> and <novunuw.com>, registered with NameCheap, Inc..
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 23, 2024; Forum received payment on January 23, 2024.
On January 24, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <novumuv.com> and <novunuw.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 January 25, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2024 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@novumuv.com, postmaster@novunuw.com. Also on January 25, 2024, 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 February 15, 2024, 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceeding, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." The question therefore is whether the named Respondents, because of their use of several alleged aliases, can be said in reality to be "the same domain name holder", which the Complainant submits they are.
The Panel finds that the Complainant has shown by evidence that the Respondent has provided false names as they are non-sensical. Both records of registration use the same telephone number. The scheme set up by means of the two domain names is similar in each case, suggesting the one actor being behind both of them. Also the two domain names were registered close in time to each other.
It is therefore clear to the Panel that the two domain names were probably concocted by the same entity using aliases. Both domain names are in effect promoting the same fraud and it would be a remarkable coincidence if both nominal Respondents embarked on it independently at roughly the same time.
Having regard to all of those considerations and the whole of the evidence, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and are therefore "the same domain name holder". The proceeding may therefore go forward on that basis. For reasons of convenience, the nominal Respondents will hereafter be referred to as "Respondent".
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company that is a managing general agent providing specialty wholesale insurance underwriting and it has been so engaged under the NOVUM name and trademark for several years.
2. Complainant has registered trademark rights in the NOVUM trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office, registration Number 7048523, registered on May 9, 2023 ("the NOVUM trademark").
3. The NOVUM trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. In 2019, Complainant registered the domain name <novumuw.com> which it uses in its business and in particular for a website on which it advertises and markets legitimate NOVUM services.
5. Respondent registered the <novunuw.com> domain name on January 8, 2024 and the <novumuv.com> domain name on January 11, 2024 ( collectively "the disputed domain names").
6. In so doing, Respondent has incorporated in the <novumuv.com> domain name the entirety of Complainant's NOVUM trademark without any authority to do so, and has added the letters "uv" and the generic Top-Level Domain ".com", and in the <novunuw.com> domain name has incorporated the word "novun" which would be read as NOVUM and has added the letters "uw" and the same gTLD, neither of which additions negates a finding of confusing similarity otherwise present as it is in the present case. The disputed domain names are therefore confusingly similar to the Complainant's NOVUM trademark.
7. Respondent has not caused the disputed domain names to resolve to active websites or to be used otherwise for a legitimate purpose, but has used them in such a way as to show that they have been registered for use in a fraud and a phishing scheme which has been put into effect and which is demonstrated by correspondence the Complainant has received from its customers.
8. By reason of the matters aforesaid, the Respondent has no rights or legitimate interests in the disputed domain names.
9. The Respondent has registered and used the disputed domain names in bad faith because the Respondent has registered and used them to pass itself off as the Complainant, engage in a phishing scheme and to perpetrate a fraud on the Complainant's customers.
10. The Complainant has cited numerous prior UDRP decisions to support its contentions.
11. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish under the UDRP and that the domain names should be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that is a managing general agent providing specialty wholesale insurance underwriting and it has been so engaged under the NOVUM name for several years.
2. Complainant has established by the evidence that it has registered trademark rights in the NOVUM trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office, registration Number 7048523, registered on May 9, 2023 ("the NOVUM trademark").
3. The NOVUM trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. On or about January 16, 2019, Complainant registered the domain name <novumuw.com> which it uses in its business and in particular for a website on which it advertises and markets legitimate NOVUM services.
5. Respondent registered the disputed <novunuw.com> domain name on January 8, 2024 and the disputed <novumuv.com> domain name on January 11, 2024 ( collectively "the disputed domain names").
6. Respondent has used the disputed domain names in such a way as to show that they have been registered for use in a fraud and a phishing scheme which has been put into effect and which is demonstrated by correspondence the Complainant has received from its customers.
7. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain names are confusingly similar to the Complainant's NOVUM trademark, the Respondent has no rights or legitimate interests in the domain names and the domain names have been registered and used by the Respondent in bad faith.
8. Accordingly, the disputed domain names should be transferred to the Complainant.
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 : 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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. Complainant has established by evidence that it has registered trademark rights in the NOVUM trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office, registration Number 7048523, registered on May 9, 2023 ("the NOVUM trademark").
The next question that arises is whether the disputed <novunuw.com> and <novumuv.com> domain names are identical or confusingly similar to the Complainant's NOVUM trademark. The Panel finds that the disputed domain names are confusingly similar to the NOVUM trademark.
The Complainant's argument to that effect is that in the case of the <novumuv.com> domain name, the Respondent has taken the entirety of the Complainant's NOVUM trademark without any authority to do so, and has incorporated it into the domain name. The result is that the dominant portion of the domain name is the Complainant's trademark, so it is obviously invoking that trademark. To that, the Respondent has added the letters "uv" which appears to be a deliberate alteration of the acronym "uw" standing for underwriter, the exact field of endeavour in which the Complainant, the owner of the trademark, works.
In the case of the <novunuw.com> domain name, the Respondent has incorporated the word "novun" which an internet user would think was a deliberately altered spelling of the Complainant's NOVUM trademark and would be read as such, namely as NOVUM. To this, the Respondent has added the letters "uw, which is an acronym for "underwriter" and would be understood as such. Google informs us that "Underwriting (UW) services are provided by some large financial institutions, such as banks, insurance companies…".1
The Respondent has also added in each case the generic Top-Level Domain ".com".
None of these alterations negate a finding of confusing similarity which is present, as it is in the present case. In fact, they underline and emphasize a finding that the Respondent knew what it was doing and was aiming at the insurance underwriter who used the trademark NOVUM, which is the Complainant.
It is therefore clear that the disputed domain names are similar to the trademark and confusingly so.
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant's NOVUM trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the Respondent has chosen to take the Complainant's NOVUM trademark and to use it in its disputed domain names, making only the additions and alterations to the trademark mentioned above, generating the clear impression that it is referring to and invoking the Complainant's NOVUM trademark in its domain names and is intending to use them for an unauthorized purpose. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain names so created;
(d) this conduct was a clear infringement of the Complainant's NOVUM trademark;
(e) moreover, the evidence shows that the Respondent is not commonly known by the domain names;
(f) the evidence also shows that the use made of the domain names by the Respondent is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i);
(g) the evidence also shows that the domain names are not being used for a legitimate non-commercial or fair use; the use of the domain names has been demonstrated to be illegitimate because they are being used to perpetrate a fraud; it also cannot be said to be non-commercial in any sense as it clearly is intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission of the trademark owner and to pretend that it is being used with the approval of the Complainant as trademark owner;
(h) the evidence also shows that the domain names are being used and were intended to be used to pass the Respondent off as the Complainant and to extract money from it's customers by fraud by attempting to have them pay money into an illicit bank account under the inducement of a fictitious employee of the Complainant;
(i) the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain names or to use its NOVUM trademark in any way;
(j) the Complainant and the Respondent are not affiliated, connected, or associated with each other;
(k) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the disputed domain names.
The Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain names were registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain names in bad faith on several grounds, namely that the Respondent:
(a) registered the confusingly similar domain names with actual knowledge of the Complainant's trademark; this has clearly been shown, as the Respondent obviously constructed the domain names to invoke the NOVUM trademark, and it must therefore have had actual knowledge of the mark to enable it to do so;
(b) the Respondent has clearly attempted to pass itself off as the Complainant and for an illegal purpose;
(c) the Respondent's typosquatting of the trademark to confuse internet users shows, by itself, bad faith registration and use;
(d) the evidence shows that the Respondent has intentionally attempted to attract, for commercial gain, internet users to the use of its domain names by creating confusion with the NOVUM trademark within the meaning of Policy ¶ 4(b)(iv);
(e) the Respondent has, by virtue of all of the facts, shown that it registered and used the disputed domain names in bad faith.
The Panel finds that each of the grounds relied on by the Complainant has been made out by the detailed case presented on its behalf.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain names using the NOVUM trademark and in view of the conduct that the Respondent has engaged in since registering them and using them for a fraud, the Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
The Complainant has thus made out the third of the three elements that it must establish.
The Complainant has correctly cited several prior UDRP decisions that support its contentions on all of the elements required to be proved.
The Complainant has established all of the elements that it must show under the Policy and is therefore entitled to the relief it seeks.
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 <novumuv.com> and <novunuw.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 16, 2024
[1] https://www.google.com/search?client=firefox-b-d&q=acronymn+for+underwrite
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page