WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hagerty Insurance Agency, Inc. v. Whoisguard / Chris Hagerty Case No. D2008-1452 1. The Parties
The Complainant is Hagerty Insurance Agency, Inc., United States of America, (“United States” or “U.S.”), represented by Traverse Legal, PLC, United States.
The Respondent is Whoisguard / Chris Hagerty, United States. 2. The Domain Names and Registrar
The disputed domain names, and , are registered with eNom, Inc., (“eNom”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2008. On September 25, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On September 25, 2008, eNom transmitted by email to the Center its verification response indicating that the registrant for each of the domain names was Whoisguard, providing contact information, and confirming other details of the registrations. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or the “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 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2008. A document identified as a “Response” was filed with the Center on October 24, 2008 identifying Whoisguard and an individual named Chris Hagerty as Respondent and stating that Chris Hagerty was the authorized representative, presumably for both Respondents.
The Center appointed Debra J. Stanek as the sole panelist in this matter on November 6, 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.
At the Panel's request, the Center subsequently transmitted by email to eNom a request for confirmation of whether the identity of the registrant of the domain names was in fact “Whoisguard”, “Chris Hagerty,” or both, sending a copy of the inquiry to both Whoisguard and Chris Hagerty. In its response, eNom indicated that to the best of its knowledge, the registrant of the domain name was Chris Hagerty and subsequently confirmed that Chris Hagerty was also the registrant of .
Subsequently the Panel issued an Order inviting statements from the Complainant and Respondent. Complainant was invited to provide a statement clarifying whether it was relying on any of the trademark registrations referenced in the Complaint and to provide copies of any such registrations, citing paragraph 3(b)(xv) of the Rules, which provides that the complaint “shall” include “documentary or other evidence, including a copy of . . . any trademark or service mark registration upon which the complaint relies . . . .” Respondent was invited to provide a statement, in accordance with paragraph 5(b)(ix) of the Rules, establishing that: (A) his name is “Christopher Hagerty” and (B) he registered and is using the disputed domain names primarily for the purpose of a non-commercial, vanity email service. In response, Complainant submitted copies of its U.S. federal trademark registrations and Respondent submitted copies of his United States passport as well as a list of actions he took to establish and maintain email service for the disputed domain names and other documentation, including a 2001 server log, pertaining to use of the disputed domain names for a vanity email service.
The Panel has noted Mr. Hagerty's query of October 14, 2008 as to whether his name may be kept out of the record in the present dispute. For reasons that will become clear, the Panel believes it is appropriate to refer Mr. Hagerty's name. 4. Factual Background
Complainant is an insurance company that, with its predecessors, has offered insurance since 1973, including insurance for classic cars and boats. The Complaint identifies a number of United States federal trademark registrations the Complainant claims, the earliest of which are:
HAGERTY CLASSIC INSURANCE (registered December 2000; date of first use November 1998).
HAGERTY. THE FUTURE OF INSURANCE FOR CARS OF THE PAST (registered May 2002; date of first use February 2001).
HAGERTY (registered December 2004; date of first use August 2002)
Complainant registered in 1995 and has used since 1996 the domain name.
Respondent registered the disputed domain names in March 2000. Recently, the domain name has provided sponsored links, including links to other companies that offer insurance for classic cars. Archived pages for the site are not available through the Internet Archive's publicly-available “Wayback Machine”. According to the Internet Archive, the site employs robots.txt to block access.1
The domain name has also provided sponsored links, however, the Complaint provides copies of archived page showing only links related to furniture and not to insurance. 5. Parties' Contentions A. Complainant (1) Each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights
Complainant and its predecessors have operated as an insurance agency since 1973 providing insurance for classic cars and boats as well as other offerings.
Complainant has over 300,000 customers around the world and has an international reputation. During the last 10 years, Complainant's business has grown, going from an insuring property valued at $50 million to $12.5 billion.
Complainant contends that it and its predecessors have used the HAGERTY mark since 1973 for its classic car and boat insurance and that the mark is now famous. Complainant identifies a number of United States federal trademark registrations and United Kingdom and European Union trademark registrations for marks that include the term “hagerty”. The supplement to the Complaint provides copies of several of Complainant's trademark registrations, including United States federal trademark registrations for:
HAGERTY CLASSIC INSURANCE
HAGERTY. THE FUTURE OF INSURANCE FOR CARS OF THE PAST.
HAGERTY
Complainant provides numerous documents showing its use of the term “hagerty” in connection with its business and provides the declaration of its counsel, in which he states that he has “authority to act on behalf of the organization” and that2:
“The statements contained in this Complaint to the World Intellectual Property Organization Arbitration and Mediation Center are a true and accurate account of the underlying circumstances relating to the purchase and use of the domain name in dispute.”
Complainant owns trademark registrations for its marks and its use of the HAGERTY mark for over 20 years, considered along with the copies of consumer testimonials and unsolicited media coverage also demonstrates that it has acquired secondary meaning for its marks.
Each of the disputed domain names is identical or confusingly similar to Complainant's HAGERTY mark because each domain name “fully incorporate[s]” the mark adding only the letter “s” and the “.com” or “.net” top-level domains. (2) Respondent has no rights or legitimate interests in respect of any of the domain names
Respondent is “typosquatting”.
Prior to this dispute, Respondent did not use either of the domain names in connection with a bona fide offering of goods or services and is not making a non commercial or fair use of the domain names.
Complainant has not authorized Respondent to use its marks.
Respondent is not commonly known as or carries on business as “Hagerty”. (3) Each of the disputed domain names was registered and is being used in bad faith
Respondent registered and is using the domain names for the purpose of intentionally attracting visitors to the websites associated with the domain names and disrupting Complainant's business while collecting click-through revenue from sponsored links.
Registration of a domain name that includes Complainant's HAGERTY mark after Complainant registered could not have been in good faith. Complainant's HAGERTY mark is a well-known mark and Respondent should be presumed to have been aware of it when registering the domain names.
Respondent is seeking to attract, for commercial gain through the sponsored links, visitors to the websites associated with the domain names by creating a likelihood of confusion with Complainant's marks as to source, sponsorship, affiliation of its website, or with regard to services offered.
Respondent's use of robots.txt to block access to relevant evidence also indicated bad faith.
Respondent's passive holding of the domain name does not negate the prior bad faith use and is itself evidence of bad faith, especially since there is no possible legitimate, good faith use for the domain names (save the fact that Respondent's name is Hagerty, which upon information and belief it is not).
Respondent should have known of the Complainant's trademark rights at the time of registration of the domain names. Further, Respondent had actual knowledge of Complainant since Complainant had occupied the domain prior to Respondent's registration. Even if Respondent did not have actual knowledge of Complainant prior to its registration of the disputed domain name, Respondent had constructive notice. Respondent should have reasonably been aware of Complainant's HAGERTY mark not only because of its trademark registrations with the USPTO and well-over 25 years of ongoing use but also due to its selection of the nearly identical domain name to that owned and occupied by Complainant, . B. Respondent
Respondent concedes that he has used privacy services to shield his identity.
He registered both domain names on March 28, 2000 and provides copies of the email confirmations of the registrations. Since that time, he has changed registration service providers to minimize the expense of the registrations and has used domain privacy services to prevent spam, fraud and identity theft. (1) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights
Complainant's asserted family of HAGERTY marks does not give exclusive rights to the name in general and apply only to the insurance industry.
Respondent does not conduct any business as an insurance provider.
Respondent's surname is “Hagerty”, which is a common surname. Respondent supplies Google search results for “hagerty –insurance” that reveal over 1 million results of the surname or trademark outside of the insurance industry.
Further, use of Hagerty with regard to insurance is relatively small compared to use of the Hagerty name worldwide. Respondent supplies results of a Google search for “hagerty insurance” that reveal 71,000 results, less than 5% of total “hagerty” search results.
As a well known surname, many common misspellings, such as “Haggerty” or “Hagertys” exist. Given how common they are, domain names that reflect an association with the surname do not infer or imply any relation to insurance. The average person should not be confused by the existence of the domain, or the domain with respect to the Complainant's marks. (2) Respondent no rights or legitimate interests in respect of the domain names
Respondent had no knowledge of Complainant's marks prior to this case. The allegation that Respondent had knowledge of Complainant's marks is false; Respondent is not a car collector.
Prior to this dispute, Respondent registered the disputed domain names with the intent to establish a non-commercial, vanity email service for family use. As early as March 2000, Respondent established email forwarding for both registered domains using a “Personal Identity Account” offered by DomainDirect.Com. In 2001, Respondent took steps to host mail service at his home using server hardware.
While Complainant never authorized, licensed, or otherwise permitted Respondent to use the HAGERTY trademark, such permission is not required for Respondent to use his surname.
Respondent is commonly known as “Hagerty,” was named Christopher Hagerty at birth and has been commonly known as Chris Hagerty or Christopher Hagerty his entire life.
Respondent's rights, and the rights of his family, in his surname predate Complainant's claimed use of the HAGERTY mark beginning in 1973. (3) The disputed domain names were not registered and are not being used in bad faith
Respondent denies using the domain names to attract Internet users to Respondent's website, disrupting Complainant's business while collecting click through revenue from sponsored links. Instead, Respondent registered and is using the domains primarily for the purpose of a non-commercial, vanity email service in good faith.
Complainant provides no evidence that use of the domain names disrupts the Complainant's business.
Respondent receives no click-through revenue, or any revenue of any kind, through the use of the domain names.
Respondent had no knowledge of Complainant's marks.
The systems serving website content for the domain names are not owned, operated, or controlled by Respondent. Respondent also does not receive any revenue based on content served by said systems, which are the result of the default “Domain Parking” services offered by the Respondent's registration service provider.
Respondent uses the domain names to support a non-commercial, vanity e-mail service. Respondent has not established any content for websites associated with the domain names, although he has the right to do so.
Instead, Respondent's registration service provider offers “domain parking” services for the site and is responsible for any use of robots.txt to block access to them.
Respondent has not registered the domain names primarily for the purpose of selling, renting or otherwise transferring them to Complainant for valuable consideration in excess of documented out-of-pocket costs. Respondent has not responded to any offer to purchase the domain names.
Respondent has not registered the domain name in order to prevent the Complainant from reflecting the “Family of Marks” in a corresponding domain name, nor has the Respondent engaged in a pattern of such conduct. Respondent only owns the two domain names in question and therefore has no history of bad faith.
Respondent has not registered the domain name primarily for the purpose of disrupting the business of a competitor. The Respondent does not compete with the Complainant or conduct business as an insurance provider.
Respondent has not intentionally attempted to attract, for commercial gain, Internet users to any web site or other on-line location, by creating a likelihood of confusion with the Complainant's “Family of Marks.” 6. Discussion and Findings A. Procedural Matters (1) Multiple Domain Names
The Complaint seeks relief as to two domain names. The Rules provide that: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” See Rule 3(c). Here, the domain names at issue are registered, albeit through a privacy service, to the same domain name holder. (2) Multiple Respondents
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated”. See Rules, paragraph 1, s.v. “Respondent”. The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules3, which provides (emphasis added):
“Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.”
Therefore, under the Panel's view, Whoisguard ought to be a proper Respondent in this case. The Panel further notes that whatever may appear in the WHOIS record, the registrar has confirmed that Chris Hagerty is the registrant of each of the disputed domain names. The Panel accordingly designates Whoisguard and Chris Hagerty as Respondents. Chris Hagerty appears to be the actual holder of the domain name (as confirmed by the registrar) while it appears that the WHOIS record continues to identify Whoisguard. The Panel uses the singular term “Respondent” in the body of this decision to refer to Respondent Chris Hagerty. B. Substantive Discussion
In order to prevail, Complainant must prove, as to each of the disputed domain names, that:
(i) It is identical or confusingly similar to Complainant's mark;
(ii) Respondent has no rights or legitimate interests in respect to it; and
(iii) It has been registered and is being used in bad faith.
The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b). (1) Identical or Confusingly Similar
In order to initiate a proceeding under the UDRP, the Complainant must provide evidence of the trademark rights on which it relies. See Rules, paragraph 3(b)(xv) (Complaint “shall” include “documentary or other evidence, including a copy of . . . any trademark or service mark registration upon which the complaint relies, . . .”) (emphasis added). Here, the Complainant did not initially provide any copies of the registrations referenced in the Complaint and its Annexes.
Complainant also provided information in what appeared to be an effort to establish rights in a mark that was not registered, as contemplated under the consensus view of other WIPO Panels. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 1.7 (evidence such as length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition may establish common law rights in a trademark). In the Panel's view, however, Complainant's information pertaining to common law trademark rights was lacking evidentiary weight. It was sponsored by a statement4 of Complainant's general counsel; however, he recited – not that his testimony was based on his personal knowledge – but only that he had “authority to act on behalf of the organization.” Further the affidavit, which related to Complainant's use of its own marks – including dating back to 1973 – contained the obviously incorrect statement (emphasis added) that it represented “a true and accurate account of the underlying circumstances relating to the purchase and use of the domain name in dispute”.
Nonetheless, Complainant has established its rights in the mark HAGERTY by virtue of the evidence of its United States federal trademark registrations for the following HAGERTY mark.
Here, the Panel finds that, with respect to each of the domain names, the addition of the letter “s” after Complainant's mark does not distinguish or differentiate the domain name from Complainant's mark and in fact is virtually identical to, and undoubtedly confusingly similar to, that mark.
Thus, the Panel finds that Complainant has established this element as to both of the disputed domain names. (2) Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, respondent has the burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing. However, the Panel finds that Complainant's prima facie showing has been rebutted by the evidence that Respondent is commonly known by his surname, “Hagerty”, and finds that Respondent has rights or legitimate interests in the use of that name.5
In any event, the Panel finds that Respondent has on the present record succeeded in showing a basis under the Policy for having rights or legitimate interests in both of the disputed domains. (3) Registered and Used in Bad Faith
In light of the conclusion that Complainant has not established the second element, it is not necessary to address the issue of bad faith. However, in the interests of completeness, the Panel states that this presented a closer question.
Under the Policy, Complainant must establish that each of the disputed domain names was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(i) Registering the domain name primarily to sell it for more than documented out-of-pocket costs;
(ii) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct;
(iii) Registering the domain name primarily to disrupt the business of a competitor; or
(iv) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement.
Respondent's registration of the domain names in March 2000 predates the earliest of Complainant's trademark registrations, HAGERTY CLASSIC INSURANCE, which did not issue until December 2000. Moreover, there is no evidence that Respondent had any actual knowledge of Complainant's rights in its marks. The Panel declines to impute such knowledge by virtue of the fact that Complainant had already registered and was using before Respondent registered the disputed domain names.6 Further, although Complainant claims that its marks are well-known, it does not provide evidence of the use or recognition of its marks over time and the weaknesses of the statement filed by its counsel has already been mentioned. Further, Complainant's own documents include a press release from November 2002 (two and half years after Respondent registered both domain names) that describes a public relations campaign as having been “developed to create brand awareness for Hagerty Insurance beyond the collector card hobby”. This suggests that Complainant's mark was not widely known at the time that Respondent registered the domain names.
Nonetheless, the Panel is skeptical of Respondent's claim that he has no responsibility for the content of the two websites associated with domain names that he has registered. Indeed, Respondent concedes that he has a right to provide website content, but has chosen not to do so at this time. Respondent also concedes that he chose to use this particular registrar in order to save money. It may be that one of the reasons for those cost savings is that the registrar uses unused web pages to generate revenue that subsidizes lower registration fees. In any case, it is not unreasonable to think that Respondent was aware of, or ought to have been aware, of the nature of the facility in featuring links and advertising. Finally, the server logs that Respondent has provided in an effort to establish his early use of the domain names for a vanity email service, do not, without some explanation of their contents, do so.
Accordingly, the Panel found the issue of bad faith to present a closer issue, but on balance, finds that Complainant did not, under the particular facts and circumstances presented here, establish bad faith registration and use of the domain names at issue. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Sole Panelist
Dated: December 11, 2008
1 “robots.txt” refers to a file “by which web site owners can instruct automated systems not to crawl their sites.” See .
2 The declaration of Complainant's counsel is of little weight. It does not state that the declaration is based either on counsel's personal knowledge or provide any basis for his recitation of the facts contained therein.
3 See also, Rules, paragraph 4, which is entitled “Notification of Complaint” (emphasis added) and does not refer to “initiation”. Instead, paragraph 4(c) refers to the “commencement” of the proceedings.
4 Though styled a “declaration,” it was not signed “under penalty of perjury”, but was in fact sworn to and “acknowledged” before a notary public, which is more consistent with an affidavit. See 28 U.S.C. § 1746(2).
5 The Panel is mindful that Respondent's surname is “Hagerty” in the singular form. Nonetheless, under the circumstances of this proceeding, the Panel concludes that Respondent's showing establishes his rights and legitimate interests in a domain name to consists of the plural (or possibly possessive) form of his surname.
6 Notably, Complainant does not claim that its use of the domain name gave rise to trademark rights. While the Complaint states that Complainant began using the domain name in 1996, the earliest date of first use in the trademark registrations provided by Complainant is November 1998.
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