WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Nationwide Mutual Insurance Company v. Texas International Property Associates Case No. D2008-1411 1. The Parties
The Complainant is Nationwide Mutual Insurance Company, of Columbus, Ohio, United States of America, represented by Bricker & Eckler LLP, United States of America.
The Respondent is Texas International Property Associates of Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2008. On September 17, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On September 18, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 9, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” and “UDRP”), 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 17, 2008. In
accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2008. The Response was filed with the Center on November 6, 2008.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 13, 2008. 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 a mutual insurance company organized under the laws of the State of Ohio with its principal place of business in Columbus, Ohio.
The Complainant, itself and through its licensed affiliates and subsidiaries has engaged in the business of providing numerous types of insurance and financial services throughout the United States of America for 80 years, the last 50 years of which have been under the trademark NATIONWIDE.
The Complainant owns, among others, various federally registered trademarks and service marks for use in connection with insurance and financial services including without limitation, NATIONWIDE Registration No. 854,888, registered August 13, 1968, for underwriting and sale of all lines of insurance, including fire, life, and casualty; and NATIONWIDE (and design) Registration No. 2,371,088, registered July 25, 2000, for insurance services. 5. Parties' Contentions A. Complainant
The Complainant contends that the domain name is confusingly similar to its famous mark, that the Respondent has no rights or interests in respect of the domain name at issue, and that the Respondent has registered and is using the domain name at issue in bad faith. B. Respondent
The Respondent contends that it is difficult to respond to the Complainant's arguments as the Complaint is not divided into sections, and that the Complainant never makes the argument that the disputed domain is identical or confusingly similar to any mark held by the Complainant.
The disputed domain name consists of a generic and descriptive dictionary word.
The Respondent may fairly use descriptive or generic terms as a commercial domain name, or typos of such terms, regardless of whether they correspond to federally-registered trademarks.
The Respondent had no knowledge of the Complainant at the time the domain name was registered. 6. Discussion and Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complaint must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant has established rights in its mark through registration and use. In fact, given the Complainant's extensive use of its marks and the registrations obtained for the marks all of which have been documented by the Complainant, the Complainant's mark appears beyond question to be highly distinctive, if not famous.
The disputed domain name differs from the Complainant's mark only by the reverse placement of two letters in the domain name. Significantly, the reversed letters are predictable mistypings of the Complainant's mark. The Respondent's registration of a domain name that constitutes a common mistyping of the Complainant's mark appears to be deliberate a practice known as “typosquatting”. Given the foregoing, the Panel finds that the disputed domain names and the Complainant's mark, when directly compared, are confusingly similar for the purposes of paragraph 4(a)(i) of the Policy. See Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150; A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/ka/ Pluto Newman,WIPO Case No. D2006-0517. C. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel's view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when a party registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant's marks are widely known, it is very unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that it was infringing the Complainant's marks.
Bad faith can be presumed based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States of America would have made the Complainant's registration known to the Respondent.
The Respondent is, in using the domain name, forwarding Internet users to other websites. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holdings, Inc. dba Big Dog Sportswear v. Frank Day Red River Farms Inc., NAF Case No. FA 93554). In addition, as the domain name is so obviously connected to widely known marks and products of the Complainant, its use by someone with no connection to the products is evidence of opportunistic bad faith (see Perfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226).
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Respondent registered and is using the domain name in bad faith. 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.
Thomas P. Pinansky
Sole Panelist
Dated: November 26, 2008
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