Complainants are CDOC, Inc. and Washington National Insurance Company of Carmel, Indiana, United States of America, represented by Eckert Seamans Cherin & Mellott LLC, United States of America.
Respondent is c/o WASHINGTONNATIONALINSURANCE.COM and Pauta's International SA of Ciudad de Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On February 3, 2012, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On February 3, 2012, Dotster, Inc. 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” or “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 February 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 23, 2012. 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
Complainant Washington National Insurance Company is a provider of supplemental health and life insurance products for middle class Americans and provides such services under WASHINGTON NATIONAL and WASHINGTON NATIONAL INSURANCE COMPANY trademarks. CDOC, Inc. is its holding company and current owner of the trademarks which are exclusively used by Washington National Insurance Company. The trademarks have been in use by Complainants and its predecessors in interest and related companies since the year 1931. Complainant total gain from operation in 2010 was approximately USD 66 million.
According to the Registrar’s verification response, the disputed domain name was registered on November 8, 2005. 5. Parties’ Contentions A. Complainant
Complainants state that they have rights over the WASHINGTON NATIONAL and WASHINGTON NATIONAL INSURANCE COMPANY trademarks in the United States that predates Respondent’s registration of the disputed domain name. Complainants allege that given the recognition and strength of their trademarks, combined with the length of time they have been used, it must be concluded that the trademarks are famous and worthy of extensive protection.
Complainants state that the disputed domain name is confusingly similar and nearly identical to the trademarks. The term “insurance” is clearly a generic term for the type of services offered by Complainants.
According to Complainants, Respondent does not have rights or legitimate interests in respect of the disputed domain name. There is no relationship between Complainants and Respondent. Respondent has not been commonly known by the disputed domain name. Respondent is not making legitimate noncommercial or fair use of the disputed domain name. Complainants have not licensed nor entered into any relationship that would give Respondent any right to use the WASHINGTON NATIONAL trademarks. In sum, Complainants argue that they have made a prima facie case and the burden of production of evidence is on Respondent.
Complainants further state that the disputed domain name was registered and is being used in bad faith. Respondent must have had Complainants’ WASHINGTON NATIONAL trademarks in mind when they registered the disputed domain name. Respondent is intentionally attempting to attract for commercial gain Internet users to its site creating likelihood of confusion with Complainants trademarks. The disputed domain name is used to direct users to pay-per-click sponsored listings content and sites relating to Complainants Washington National business that is likely to confuse users as to the source, sponsorship or affiliation of Respondent´s site with Complainants. Complainants argue that Respondent has engaged in a pattern of bad faith behavior citing two cases were Respondent was found to have acted in bad faith: AOL, Inc. v. Pauta’s International SA, NAF Claim No. 1108001402910 and R India Ltd. V. Domain Management, Pauta’s International SA,WIPO Case No. D2009-0592).
Complainants request the transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainants have established their trademark rights in WASHINGTON NATIONAL and WASHINGTON NATIONAL INSURANCE COMPANY as evidenced by the trademark registrations submitted with the Complaint..
The Panel is also prepared to find that the disputed domain name is confusingly similar to Complainants' WASHINGTON NATIONAL and WASHINGTON NATIONAL INSURANCE COMPANY trademarks. The words “washington” and “national” are clearly the dominant elements of the disputed domain name. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to both trademarks.
Therefore, the Panel finds that Complainants have satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. Complainants have not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. Complainants have prior rights in the trademarks, which precede Respondent's registration of the disputed domain name by several decades. Complainants have therefore established a prima facie case that Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted to Respondent the burden to produce evidence to rebut this presumption.
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that Complainants have satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Complainants must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Because the disputed domain name contains the trademark WASHINGTON NATIONAL with the addition of the term “insurance” (being insurance the core of Complainants’ business), it is hard to imagine that Respondent did not have in mind Complainants’ business when it registered the disputed domain name. Thus, it is the view of this Panel that the disputed domain name was registered in bad faith.
In addition, the Panel has visited the disputed domain name on April 6, 2012. Respondent’s resolving website feature links to third-party sites that may be of interest to Complainants’ customers and therefore divert business away from Complainants. The Panel concludes that Respondent’s use of confusingly similar disputed domain name for such a purpose constitutes bad faith under Policy. Thus, the case comes within sub-paragraph 4(b)(iv) of the Policy which provides “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Finally, it is true that, as Complainants have asserted and Respondent has not denied, that Respondent was found to be acting in bad faith in past UDRP cases (See AOL, Inc. v. Pauta’s International SA, NAF Claim No. 1108001402910 and R India Ltd. V. Domain Management, Pauta’s International SA,WIPO Case No. D2009-0592). It is the view of the Panel that this is further evidence of bad faith use.
Complainants have therefore made out the third of the three elements that it must establish. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: April 6, 2012
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