WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. Web Advertising Corp.
Case No. D2007-1416
1. The Parties
The Complainant is Nationwide Mutual Insurance Company, Columbus, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondent is Web Advertising Corp., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2007. On September 26, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On September 27, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2007.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 9, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Nationwide Mutual Insurance Co., with its principal place of business in Columbus, Ohio, United States of America. The Respondent is Web Advertising of Nassau, Bahamas. The Complainant, its licensed affiliates and subsidiaries are in the business of insurance and financial services. The Complainant was founded eighty years ago and has used the NATIONWIDE mark for the past fifty years. It owns several federal registered marks for its NATIONWIDE mark. Its well known slogan “Nationwide is on your side” is also a registered mark.
The Complainant has provided a list of some of its federal registered marks, which are:
NATIONWIDE – Registration No. 854,888, registered Aug 13, 1968, for underwriting and sale of insurance, including fire life and casualty;
NATIONWIDE (and design) - Registration No. 2,371,088 registered July 25, 2000, for insurance services, namely underwriting brokerage of life health, annuity, fire, property and casualty insurance; and financial services namely distribution and brokerage of mutual funds, money market funds, pension plan and IRA plans;
NATIONWIDE Registration No. 2,017,147 registered November 19, 1996, for financial services namely brokerage and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, stocks and bonds;
NATIONWIDE ADVANTAGE MORTGAGE (and design) Registration No. 2,811,277, registered February 3, 2004, for mortgage lending and brokerage services;
NATIONWIDE IS ON YOUR SIDE - Registration No. 1,793,850 registered September 21, 1993, for insurance services; namely underwriting life, health, annuity, property and casualty insurance; financial services namely distribution and brokerage of mutual funds, money market funds, pension plans and IRA plans;
NATIONWIDE FINANCIAL SERVICES - Registration No. 1,995,871 registered February 13, 1996, for financial services namely brokerage and administration of mutual funds, money market funds, pension plans and IRA plans;
NATIONWIDE FINANCIAL - Registration No. 2, 778, 512 registered December 3, 2003, for insurance and financial services, namely life insurance underwriting, annuity underwriting, mutual funds investment, administration of pension plans, retirement accounts and retirement plans, asset management services; and
NATIONWIDE INSURANCE - Registration No. 3,196,175 registered, January 9, 2007, for insurance underwriting and brokerage featuring all types of insurance, including fire life and casualty.
The registration certificates provide prima facie evidence of the validity of the Complainant’s registered trademarks under 15 U.S.C. � 1115 (b).
5. Parties’ Contentions
A. Complainant
Tracing its history, the Complainant states it was founded as Farm Bureau Mutual Automobile Insurance Company in Columbus, Ohio in 1926. It commenced selling automobile insurance and later in 1930 it included fire and life insurance to its business. The Complainant changed its name to Nationwide Mutual Insurance Co. in 1955, and since then has used the NATIONWIDE mark for its services and products in all fifty states of United States of America. The Complainant’s insurance products include casualty, automobile, life, group, accident, disability, health, property, commercial, homeowners and fire insurance products.
In 1960 it started offering mutual funds and presently offers a wide range of financial services such as mortgage, individual annuities, money management, deferred compensation, life insurance products, and employer-sponsored insurance retirement products and investment management. The Complainant claims that its registered marks bearing numbers 854,888, 1,793,850, 1,955,871, 2,371,088 and 2,017,147, have reached an incontestable status which is conclusive evidence of their validity under 15 U.S.C. � 1115 (b). The Complainant claims it has more than eight thousand (8000) exclusive authorized sales agents and one hundred and sixty thousand (160,000) non exclusive registered marketing representatives. The Complainant maintains a strict control over the use of its marks by its authorized agents and representatives.
Since 1995, the Complainant has extensively advertised its products throughout the United States. The public have come to associate the NATIONWIDE mark with Complainant’s products and services. Since the year 1998, the Complainant claims that it has expended over $240 million on advertising, marketing and promotional material through various media and sponsorship of events like the “PGA Nationwide golf tour”.
The Complainant also supports an advertising co-operative where it contributes half the amount spent by its agents on advertising the nationwide mark. Since 1980 Nationwide has contributed in excess of $ 71 as matching funds for a total of $142 million spent on promoting goods and services under the nationwide mark. Its insurance and financial plans under the nationwide mark have made it the largest administrator of qualified retirement plans for public and private sectors. As of end 2003, it is the fifth largest provider of variable life insurance, forth largest homeowner insurer, the sixth largest auto insurer, seventh largest property and casualty insurer in the United States. The Complainant is ranked 91 on the Fortune 500 list and 297 on the Global 500 listing.
Since 1994 the Complainant has hosted a website with its domain name for its online customers, who use the site for managing their accounts and for other purposes such as getting quotations. The Complainant states that its domain name has become an important asset as it is a means to be in touch with its customers and the public. Two other domain names which are used by the Complainant are and .
The Complainant has cited several previous decisions that have recognized its strong rights in its NATIONWIDE mark. The Complainant states that the Respondent has registered the domain name to capitalize on the fame of the Complainant’s mark and to attract Internet traffic. The Respondent’s website displays links to insurance and financial services with headings that use the term and mark NATIONWIDE. These links, according to the Complainant, lead to third party websites that provide quotes on insurance in direct competition to the Complainant. Unsuspecting users are redirected to such sites as Allstate, Countrywide, and Lending Tree, Find auto, Auto quotes, AARP, or The H. The link titled “Nationwide Insurance”, for instance, leads to a competitor’s website. Similarly, many links on the website are designed to confuse and mislead users to thinking that they would be led to the Complainant’s website.
It is the contention of the Complainant that, nearly all the pages contain third party links and the Respondent is deriving revenue from these click-through links that misdirect users. The Complainant states that the Respondent is using the domain name in bad faith to benefit from misdirected web traffic in search of information on the Complainant’s products. The Complainant refers to two cases Bank of America v. Conquest Business Ventures Inc, NAF Case No. 464716 and Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, which found the Respondent’s use of known trademarks to misdirect users to competitor sites, was in bad faith.
The Complainant states that the Respondent has no legitimate interests in the disputed domain name and is not a licensee or otherwise associated with the Complainant. The Respondent’s name does not include “Nationwide”. The Respondent’s business has nothing to do with the links related to insurance and financial products and services located on the website linked to the domain name . The Respondent is therefore not using the domain name in connection with bona fide offering of goods and services. Misdirecting Internet traffic does not constitute legitimate use nor could any legitimate interest be contemplated given the background.
The Complainant argues that the disputed domain name uses the NATIONWIDE mark in its entirety along with the words “insurance” and “services”. A domain name, according to the Complainant, is construed to be confusingly similar to the mark, if it incorporates a mark entirely, even if it has additional words, and cites the cases Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512; and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
The Complainant states it owns numerous registrations of the NATIONWIDE mark for insurance services. It has used the mark for over five decades which gives it superior and prior rights. The Respondent has no such rights and holds and uses the domain name in bad faith, and prevents the Complainant from using a corresponding domain name. Users are likely to confuse the Respondent’s use of the domain name to the Complainant’s marks. As the linked websites posts information related to the Complainant’s products and services, browsers may believe the linked websites are in some way associated or affiliated with the Complainants.
The Complainant states the Respondent has registered the domain name in bad faith as the name was registered long after the mark has become famous. Besides, the Respondent has tailored the website to mislead customers to believe that it is affiliated to the Complainant. All this, according to the Complainant, shows the Respondent’s prior awareness of the Complainant’s business and its marks. Finally, the Complainant alleges that the Respondent has a long history of registering domain names that infringe trademark rights and has provided a list of several domain name disputes where the Respondent was found to have acted in bad faith.
The Complainant requests for the transfer of the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has to satisfy three essential aspects set out in paragraph 4(a) of the Policy to obtain the transfer of the disputed domain names.
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is required, under paragraph 4(a)(i) of the Policy, to establish its rights in the mark and demonstrate that the disputed domain name is either identical or confusingly similar to its mark.
The Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i). Substantial evidence has been provided by the Complainant of its registered NATIONWIDE marks and of its continued usage in commerce for several decades, which establishes its rights in the mark.
The domain name in dispute contains the Complainant’s NATIONWIDE mark along with the words “insurance” and “services”. It is well established that use of terms related to the Complainant’s area of business increases rather than diminishes the likelihood of confusion. There are numerous cases which have found that domain names that incorporate terms relevant to a complainant’s area of business are confusingly similar to the mark; See Government Employees Insurance Company v. NetSolutions Proxy Services, WIPO Case No. D2004-0919.
Prior cases that have countenanced domain names using a combination of the Complainant’s NATIONWIDE mark with the term “insurance” are: Nationwide Mutual Insurance Company v. Forum LLC,WIPO Case No. D2006-0309, regarding domain name which uses the mark with a misspelling of the term “insurance”, Nationwide Mutual Insurance Company v Henry Adams,WIPO Case No. D2006-1492 for the domain name and Nationwide Mutual Insurance Company v. Rebecca Foster,WIPO Case No. D2007-0210, pertaining to the domain name . In all these cases it was found the domain names were confusingly similar to the Complainant’s mark.
The Panel finds the Complainant has clearly established that its NATIONWIDE mark is associated with the Complainant’s insurance and financial services. The Respondent has deliberately tried to create confusing similarity with the marks of the Complainant by adding terms such as “insurance” and “services” to the mark. Therefore the second requirement of paragraph 4(a)(i) has been met.
The Panel finds that the domain name in issue is confusingly similar to the Complainant’s mark and the requirements of paragraph 4(a)(i) of the Policy have been established.
B. Rights or Legitimate Interests
The Complainant, under paragraph 4(a)(ii), has to make out a prima facie case that the Respondent lacks rights and interests in the domain name.
The Complainant states that it has not authorized the Respondent to use its marks in any manner. There is no evidence that the Respondent is known by the disputed domain name. It is unlikely that the Respondent has any trademark or other rights in the names. The Respondent appears to have registered the domain name with full knowledge of the Complainant’s marks and uses it for the purpose of diverting Internet traffic, which is neither fair use nor non commercial use. Such facts and circumstances create a rebuttable presumption that the Respondent has no rights in the domain name and is not using it for any legitimate purpose. In the absence of any rebuttal from the Respondent, it is fair to conclude that the Respondent has no rights. See Incorporated v. Sigfredo Alviera,WIPO Case No. D2007-1273.
The Complainant has submitted printouts of the Respondent’s websites and its featured links which redirect users to other competitor sites. The selection of a domain name by the Respondent with a widely known trademark which is used to link and redirect to other third party websites does not confer rights or legitimate interests; See Media General Communications Inc. v. RareNames, WebReg, WIPO Case No. D2006-0964 and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. The Panel is satisfied that there is nothing on record to show any rights or legitimate interests in the domain name favoring the Respondent.
The Complainant has made out a prima facie case that the Respondent is using the Complainant’s mark in the domain name without having any rights or legitimate interests. As the Respondent has failed to file a response, the Panel finds based on the record that the Complainant has satisfied the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith.
The Complainant has to establish that the domain name is registered and used in bad faith under paragraph 4(a)(iii).
Where a mark is widely known, in specific circumstances it can be reasonably inferred that a respondent had actual knowledge of a complainant’s trademark. The registration of domain names by a respondent with prior knowledge of a complainant’s mark has been consistently found to constitute bad faith registration, see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong,WIPO Case No. D2003-0408.
The Panel finds the Respondent has registered the domain name to misdirect the Complainant’s customers for the purpose of commercial gain in line with paragraph 4(b)(iv). Given the distinctiveness and the fame of the Complainant’s mark, the addition of descriptive terms to the mark with the intention of redirecting potential customers of the Complainant to competing websites constitutes bad faith under the Policy. See Verisign Inc., v. jumbo domains,WIPO Case No. D2006-1582.
The Complainant has listed several UDRP cases in which the Respondent was involved as respondent which in the Panel’s view confirms that the Respondent has engaged in a pattern of registering domain names that prevent trademark owners from using their marks in corresponding domain names. Further, the Respondent uses the domain names for the purpose of displaying advertising links, and it appears that in several domain name disputes the Respondent has been ordered to transfer domain names to their legitimate owners. The use of a domain name to attract consumers to a commercial web directory featuring links which are unconnected to the Complainant is evidence of bad faith. It is presumed that the Respondent is diverting users to third party websites for receiving revenue, see Digipoll Limited v. Domain Admistrator,WIPO Case No. D2007-0999.
The Complainant has successfully established that the domain name was registered and is being used in bad faith under paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: November 24, 2007
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