DECISION

 

Primerica, Inc. v. Kotz Edgerton / Primerica Health

Claim Number: FA2501002136282

 

PARTIES

Complainant is Primerica, Inc. ("Complainant"), represented by David K. Caplan of Kilpatrick, Townsend & Stockton LLP, California, USA. Respondent is Kotz Edgerton / Primerica Health ("Respondent"), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <primerica-health.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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 21, 2025; Forum received payment on January 21, 2025.

 

On January 22, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <primerica-health.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 January 24, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2025 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@primerica-health.com. Also on January 24, 2025, 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 14, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant is a leading provider of financial products to middle-income households in the United States and Canada. Complainant holds rights in the PRIMERICA mark in the United States and Canada, inter alia, through its registration with the USPTO (e.g., Reg. No. 1,463,069, registered on October 27, 1987). The disputed domain name is confusingly similar to Complainant's PRIMERICA mark, as it incorporates Complainant's mark in its entirety, with the mere addition of the generic term "health," a hyphen, and the ".com" gTLD.

 

ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the PRIMERICA mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent has employed the disputed domain name in an email phishing and fraud scheme targeting individuals who may be interested in working for Complainant. The disputed domain name currently resolves to an inactive webpage, which does not constitute a legitimate use.

 

iii) Respondent registered and is using the disputed domain name in bad faith. Respondent is exploiting the disputed domain name to impersonate Complainant's employees and solicit personal information from individuals who may be interested in employment with Complainant. Respondent had constructive or actual knowledge of Complainant and its trademarks at the time of registering the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on October 5, 2024.

2. Complainant holds rights in the PRIMERICA mark in the United States and Canada, inter alia, through its registration with the USPTO (e.g., Reg. No. 1,463,069, registered on October 27, 1987).

 

3. The disputed domain name currently resolves to an inactive webpage.

 

4. Respondent created email addresses impersonating Complainant's employees and sent deceptive emails incorporating Complainant's trademark and logo to prospective job applicants in an attempt to obtain sensitive or confidential personal information.

 

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 asserts rights in the PRIMERICA mark in the United States and Canada, inter alia, through its registration with the USPTO (e.g., Reg. No. 1,463,069, registered on October 27, 1987). Registration of a mark with the USPTO is generally recognized as valid evidence of trademark rights under Policy ¶ 4(a)(i). As Complainant has provided proof of its trademark registration with the USPTO, the Panel concludes that Complainant has established rights in the PRIMERICA mark under Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name <primerica-health.com> is confusingly similar to Complainant's PRIMERICA mark because it incorporates Complainant's mark in its entirety, with the mere addition of the generic term "health," a hyphen, and the ".com" gTLD. The Panel finds that the disputed domain name can still be found confusingly similar to Complainant's mark under Policy ¶ 4(a)(i), despite the addition of the generic term and the ".com" gTLD. 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 PRIMERICA mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name, has not been authorized by Complainant to use Complainant's mark, and is not affiliated with Complainant. The Panel notes that the WHOIS data lists "Kotz Edgerton / Primerica Health" as the registrant. However, there is no affirmative evidence indicating that Respondent is actually commonly known by the name "Primerica Health," as opposed to merely registering the disputed domain name using false information to assert rights or legitimate interests. Moreover, there is no evidence in the record suggesting that Respondent was authorized to use the mark. See Midjourney, Inc. v. Midjourney Group / The Midjourney AI, FA 2103820 (Forum July 29, 2024) ("the evidence available to the Panel suggests that Respondent, in an effort to wrap itself in an air of legitimacy to give cover to its registration of the domain name, adopted a pair of rough equivalents of Complainant's corporate name, …, and respondent did not have rights or legitimate interests in the disputed domain name"). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant further asserts that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the disputed domain name to send phishing emails impersonating Complainant's employees. Using a disputed domain name to pose as a complainant's employee for the purpose of furthering a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See AbbVie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the at-issue domain name to pose as Complainant's CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant's ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)").

 

The Panel notes that Respondent created email addresses impersonating Complainant's employees and sent deceptive emails incorporating Complainant's trademark and logo to prospective job applicants in an attempt to obtain sensitive or confidential personal information. The Panel finds that Respondent's activities are fraudulent and malicious and, therefore, do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel determines that Complainant has established a prima facie case based on the considerations above. Each of these factors contributes to the prima facie case against Respondent. As Respondent has neither filed a Response nor attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and is using the disputed domain name in bad faith by impersonating Complainant's employees and sending phishing emails for financial gain. Registering a confusingly similar domain name to disrupt business through phishing schemes may serve as evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using a domain name in a phishing scheme constitutes bad faith). The Panel notes that Respondent created deceptive emails impersonating Complainant's employees, incorporating Complainant's trademark and logo, and sent them to prospective job applicants in an attempt to obtain sensitive or confidential personal information. The Panel finds that Respondent's use of the disputed domain name for such a phishing scheme supports a finding that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant further asserts that Respondent registered the disputed domain name with constructive or actual knowledge of Complainant's rights in the PRIMERICA mark. Impersonating a complainant to confuse users may demonstrate actual knowledge of a complainant's trademark rights, supporting a finding of bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) ("[T]he fact that Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used it in a phishing scheme shows actual knowledge of Complainant's trademark rights at registration."). Given the manner in which Respondent has used the disputed domain name, the Panel infers that Respondent had knowledge of Complainant's rights when registering the disputed domain name, thereby confirming bad faith under 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 <primerica-health.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 17, 2025