Complainant is Grange Mutual Casualty Company of Columbus, Ohio, United States of America, represented by Vorys, Sater, Seymour and Pease, LLP, United States of America.
Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America; David Haan of Las Vegas, Nevada, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2012. On July 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 27, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 3, 2012.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2012.
The Center appointed Gordon Arnold as the sole Panelist in this matter on September 11, 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
The Disputed Domain Name is .and was registered on September 1, 2010.
Complainant is Grange Mutual Casualty Company, an Ohio Corporation. Complainant has been using the GRANGE Mark for 75 years for insurance services. Complainant filed its first federal trademark application for GRANGE in 1988, and Complainant has owned federal trademark registrations for its marks for more than 20 years.
A list of Complainant's trademark registrations follows:
Mark Reg. No. Services
GRANGE INSURANCE
3,821,201
Insurance services, namely, insurance underwriting in the field of auto, home, farm, business, life, property, casualty, accident, health, disability, annuities.
GRANGE LIFE INSURANCE
3,821,202
Insurance services, namely, life insurance and annuity underwriting.
GRANCE INSURANCE and Design
3,723,315
Insurance services, namely, insurance underwriting in the field of auto, home, farm, business, life, property, casualty, accident, health, disability, annuities.
GRANGE LIFE INSURANCE and Design
3,723,316
Insurance services, namely, life insurance and annuity underwriting.
GRANGE INSURANCE
YOUR PARTNER IN
PROTECTION and Design
1,535,724
Insurance underwriting services, namely, property, casualty, life, accident, and health insurance underwriting services.
GRANGE AGENTWARE
2,996,881
Providing temporary use of non-downloadable computer software for insurance policy quoting, issuance and policy services, claims reporting, billing, and accessing insurance manuals, forms and policy documents
GRANGE AGENTWARE
EXPRESS
2,996,880
Providing temporary use of non-downloadable computer software that enables a real time connection between an insurance agency management system and an online insurance policy quoting, issuance and policy servicing system.
GRANGEONE
3,773,249
Insurance services, namely, underwriting home and auto insurance.
GRANGE EODB and Design
3,723,460
Insurance services, namely, insurance underwriting in the field of auto, home, farm, business, life, property, casualty, accident, health, disability, annuities
GRANGE EODB EASE OF
DOING BUSINESS and Design
3,723,459
Insurance services, namely, insurance underwriting in the field of auto, home, farm, business, life, property, casualty, accident, health, disability, annuities. 5. Parties’ Contentions A. Complainant
Complainant has alleged and submitted evidence that:
- Complainant has invested substantial time and resources in building the goodwill embodied in the GRANGE Mark.
- Complainant has used the GRANGE Mark for many years in connection with insurance services and all of its registrations issued before Respondent’s registration of the Disputed Domain Name.
- Complainant registered a “.com” version of the Disputed Domain Name in 1996 and has operated a website at that address for 15 years.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent is not an agent or licensee of the Complainant and is not authorized to use Complainant's mark.
- Complainant found no evidence that Respondent has registered with or is licensed by any state insurance regulator.
- Respondent's use of the Disputed Domain Name misrepresents the source and origin of the services and falsely and misleadingly implies Complainant’s sponsorship, approval, affiliation, or endorsement of the website and the services offered by Respondent.
- Complainant contacted Respondent on the use and registration of the Disputed Domain Name by mail, but Respondent did not respond.
- Respondent has linked the Disputed Domain Name’s website to the actual business listing for Complainant at the Better Business Bureau website.
- Respondent is likely to profit from users’ confusion due to click through advertising.
- Respondent is using the Disputed Domain Name in connection with a website that advertises and promotes third-party insurance providers to generate revenue.
Complainant requests the transfer of the Disputed Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s GRANGE Mark, for the following reasons.
Complainant operates its business in the insurance field and has proved its trademarks rights over GRANGE.
The Disputed Domain Name comprises the words “grange” and “insurance” and the further addition of the generic top-level domain “.org”. The suffix “.org” does not displace the initial interest confusion caused by the “grange” and “insurance” components. B. Rights or Legitimate Interests
Complainant has submitted sufficient evidence of a lack of rights or legitimate interests in the Disputed Domain Name.
Respondent submitted no evidence that it has any rights or legitimate interests in the Disputed Domain Name.
In this connection, the Panel cannot discern any basis on which Respondent might hold rights or legitimate interests in a trademark that has been in use by Complainant for nearly 75 years. Complainant has not granted any rights to Respondent to use the Disputed Domain Name. Nor does Respondent contend that it has any legitimate interests in the Disputed Domain Name. So far as the Panel can see the Disputed Domain Name resolves to a web page that advertises and promotes third-party insurance providers. In the Panel’s view, this use does not amount to rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds therefore that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant has submitted sufficient evidence of registration and use in bad faith, and Respondent has declined to rebut any allegation or offer evidence to the contrary.
In the Panel’s view, once a complainant has made out a prima facie case, as Complainant has done in this matter, it shifts to a respondent to file a response in order to displace the bad faith interpretations that might otherwise be placed on its conduct.
The registration on the Disputed Domain Name containing Complainant’s GRANGE Mark, makes it easy for the Panel to accept Complainant’s contentions that Respondent must have been aware of Complainant and its reputation at the time it registered the Disputed Domain Name.
As to the use in bad faith, the website associated to the Disputed Domain advertises and promotes third-party insurance providers. Therefore, in the Panel’s view, Respondent may generate revenue directly from the direct interest arising out of the use of GRANGE Mark in the Disputed Domain Name, as per paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 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 Complainant.
Gordon Arnold
Sole Panelist
Dated: September 29, 2012
Full & Egal Universal Law Academy