Markel Corporation v. DAS Legacy
Claim Number: FA2304002041740
Complainant is Markel Corporation (“Complainant”), internally represented by Anna King, Virginia, USA. Respondent is DAS Legacy (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <markelgroup.com>, registered with NameCheap, Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on April 26, 2023, naming “Unknown” of Reykjavik, Iceland, as Respondent. Forum received payment on April 26, 2023.
On April 26, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <markelgroup.com> domain name is registered with NameCheap, Inc. and that Respondent, DAS Legacy, of Orange City, Florida, 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 April 26, 2023, Forum sent the Registrar’s email verification to Complainant and asked Complainant to amend the Complaint to properly identify the Respondent and its contact information. Complainant filed an Amended Complaint next day.
On April 27, 2023, Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2023 by which Respondent could file a Response to the Amended Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on April 27, 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 May 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Markel Corporation, provides a variety of insurance and financial services. Complainant has rights in the MARKEL mark through trademark registrations, including with the United States Patent and Trademark Office (“USPTO”).
On April 3, 2023, Complainant filed with the USPTO an intent to use application for the mark MARKEL GROUP (Serial No. 97,870,515). Respondent’s <markelgroup.com> domain name is identical or confusingly similar to the MARKEL mark and is also identical to the MARKEL GROUP intent-to-use mark.
Respondent lacks rights or legitimate interests in the <markelgroup.com> domain name since Respondent has held the domain name since September 2011 without putting any content there. Respondent also holds several unrelated domain names.
Respondent registered and uses the <markelgroup.com> domain name in bad faith. Respondent appears to be using the site for commercial gain by an attempt to negotiate a purchase and an unreasonable demand for payment. A publicly available malware analysis report shows two of the domain names held by Respondent containing malware. The report shows that the domain name is tied to ransomware activities. As indicated in the report, the phone number that is publicly associated with the registrant on WHOIS of the <markelgroup.com> domain name has a history of being used by ransomware threat actors.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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 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”).
Complainant has shown that it has rights in rights in the MARKEL mark through trademark registrations, including with the USPTO, e.g. MARKEL design plus word mark Reg. No. 1,720,714, registered on September 29, 1992 and MARKEL word mark, Reg. No. 4,167,564, registered on July 3, 2012.
Complainant’s intent-to-use application is insufficient to establish rights in the MARKEL GROUP mark. See MaxID Corp. v. Sam Koulusi / Sam, FA 1421132 (Forum Feb. 24, 2012): “ITU applications confer no rights on the applicant, unless and until the marks register.”.
The Panel finds Respondent’s <markelgroup.com> domain name to be confusingly similar to Complainant’s MARKEL word mark as it contains the mark in its entirety, adding the generic word “group”, which is insufficient to distinguish the domain name from the mark. The inconsequential gTLD “.com” may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel’s findings in relation to the next element, it is unnecessary to consider this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The <markelgroup.com> was registered on September 22, 2011, prior to Complainant’s registration of its MARKEL word mark but many years after the registration of Complainant’s MARKEL design plus word mark. According to Complainant, since its registration the domain name has not resolved to an active website but Respondent’s phone number contained in the malware analysis report annexed to the Complaint is the same as the number used by the registrants of two other domain names associated with ransomware.
However, the phone number and address attributed to Respondent in the WHOIS contained in the malware analysis report annexed to the Complaint differs from the phone number and address of Respondent provided by the Registrar to Forum in this proceeding. There is no evidence that the phone number and address provided by the Registrar are associated with ransomware actors nor that the domain name has been used in relation to malware or ransomware. Accordingly, the Panel is not persuaded that Respondent is associated with ransomware actors.
As to Complainant’s assertion of bad faith on the ground that Respondent appears to be using the site for commercial gain by an attempt to negotiate a purchase and an unreasonable demand for payment, Complainant has provided no evidence of the attempted negotiation nor of the amount demanded. It is therefore not possible to determine when the attempt occurred; whether Complainant approached Respondent; nor whether Respondent approached Complainant. Accordingly, the Panel is not satisfied that Respondent registered or acquired the domain name in 2011 primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant.
There are no other possible grounds alleged for a finding of bad faith on the part of Respondent.
For these reasons, the Panel is not satisfied that the domain name was registered and is being used in bad faith.
Complainant has failed to establish this element.
Reverse Domain Name Hijacking
Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Such a finding is justified only in rare cases, such as instances where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy. See, e.g., Brime, LLC v. Jack Zhang, FA 1945815 (Forum July 6, 2021) (finding RDNH in "Plan B" scenario, where complainant brought complaint following unsuccessful attempt to purchase domain name, knowing it would not be able to make the showings required by the Policy).
The phone number and address in Iceland attributed to Respondent relied upon in the Complaint filed on April 26th 2023 were those contained in the annexed malware report’s WHOIS. Complainant was made aware of Respondent’s different actual name, phone number and address in Florida upon receipt of the Registrar’s verification and Complainant included those details in the header of the Amended Complaint. Despite this, Complainant continued to assert that Respondent’s phone number is the same as that associated with ransomware actors.
These circumstances satisfy the Panel that Complainant filed the Amended Complaint knowing that Respondent is not associated with ransomware actors and did so in an attempt at Reverse Domain Name Hijacking.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and that the Amended Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <markelgroup.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: May 23, 2023
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