Progressive Casualty Insurance Company v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1801001767695
Complainant is Progressive Casualty Insurance Company (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler, Ohio, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <progressivehomeinsurance.com>, registered with Internet Domain Service BS Corp.
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 Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.
On January 23, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <progressivehomeinsurance.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2018 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@progressivehomeinsurance.com. Also on January 26, 2018, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 uses the well-known PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE marks in connection with its property and casualty insurance services. Complainant has rights in the PROGRESSIVE (e.g., Reg. No. 1,844,695, registered Apr. 12,1994) and PROGRESSIVE HOME ADVANTAGE (e.g., Reg. No. 3,508,522, registered Sep. 30, 2008) marks through trademark registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <progressivehomeinsurance.com> domain name is confusingly similar to Complainant’s PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE mark because Respondent adds the generic term “insurance” and a “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <progressivehomeinsurance.com> domain name because Respondent is not authorized or licensed to use Complainant’s PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE marks, and Respondent is not commonly known by the disputed domain name. Respondent also fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to either direct users to Complainant’s own website, to a website offering competing services, or to a survey website to phish for personal information.
Respondent registered and uses the <progressivehomeinsurance.com> domain name in bad faith. Respondent creates a likelihood of confusion with Complainant’s marks to offer competing insurance services. Further, Respondent’s use of a privacy service to hide its identity further indicates bad faith registration and use. Finally, Respondent had actual and constructive notice of Complainant’s rights in the PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE marks at the time Respondent registered the domain name as it uses the domain name to offer competing insurance services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the well-known PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE marks in connection with its property and casualty insurance services. Complainant has rights in the PROGRESSIVE (e.g., Reg. No. 1,844,695, registered Apr. 12,1994) and PROGRESSIVE HOME ADVANTAGE (e.g., Reg. No. 3,508,522, registered Sep. 30, 2008) marks through trademark registrations with the USPTO. Respondent’s <progressivehomeinsurance.com> domain name is confusingly similar to Complainant’s PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE marks.
Respondent registered the <progressivehomeinsurance.com> domain name on June 4, 2007.
Respondent has no rights or legitimate interests in the <progressivehomeinsurance.com> domain name. Respondent uses the domain name to either direct users to Complainant’s own website, to a website offering competing services, or to a survey website to phish for personal information.
Respondent registered and uses the <progressivehomeinsurance.com> domain name in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the PROGRESSIVE marks through trademark registrations with the USPTO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <progressivehomeinsurance.com> domain name is confusingly similar to Complainant’s PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE marks because Respondent adds a generic term and gTLD to Complainant’s marks.
Respondent has no rights or legitimate interests in the <progressivehomeinsurance.com> domain name. Respondent is not authorized or licensed to use Complainant’s PROGRESSIVE and PROGRESSIVE HOME ADVANTAGE marks. Respondent is not commonly known by the disputed domain name. In the event a respondent fails to submit a response in UDRP proceedings, panels have relied on WHOIS information in order to determine whether Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information for the <progressivehomeinsurance.com> domain name lists the Registrant as “Maddisyn Fernandes / Fernandes Privacy Holdings.” Therefore, Respondent has no rights in the <progressivehomeinsurance.com> domain name as Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use at the <progressivehomeinsurance.com> domain name. Respondent uses the domain name to either direct users to Complainant’s own website, to a website offering competing services, or to a survey website to phish for personal information. Redirecting users to such websites and phishing for information shows a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent made legitimate noncommercial or fair use of the Disputed Domain Name. Respondent is intentionally attempting to divert Internet users to its malware scam/survey website via the Disputed Domain and is therefore not making legitimate noncommercial, or fair use of the Disputed Domain pursuant to Policy ¶4(a)(ii).”).
Respondent’s <progressivehomeinsurance.com> domain name creates a likelihood of confusion with Complainant’s marks and offers competing insurance services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Respondent had actual knowledge of Complainant’s PROGRESSIVE mark prior to registering the <progressivehomeinsurance.com> domain name. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent’s bad faith is further evidenced by Respondent’s efforts to concealed its true identity by means of a proxy service.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <progressivehomeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 3, 2018
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