Complainant is Triple-S Management Corporation of San Juan, Puerto Rico, Unincorporated Territory of the United States of America, represented by Ferraiuoli LLC, United States of America.
Respondent is Whois Privacy Protection Services Inc. of Kirkland, Washington, United States of America / Nathan Stringer of Atlanta, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 7, 2016, 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 Complainant on January 13, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 14, 2016. On January 18, 2016 the Center sent an email communication to the Parties requesting that Complainant clarify the status of the court proceeding referred to in the Complaint. On February 1, 2016 Complainant confirmed the court proceeding had been dismissed and provided further documentation to that effect.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 3, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 7, 2016. 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 trademarks upon which the Complaint is based are SSS and ATLANTIC SOUTHERN INSURANCE. Complainant owns the SSS mark, which it has used in commerce since 2005. The SSS mark is used in connection with the administration and underwriting of health insurance, prepaid financing, and the administration of medical, hospital, and related health care services, in classes 36 and 44 of the International Nice Classifications. The SSS mark was registered with the United States Patent and Trademark Office on October 12, 2010.
The ATLANTIC SOUTHERN INSURANCE mark has been used in commerce in connection with insurance services continuously and uninterruptedly since at least 1945. Complainant acquired said mark through a merger announced publicly on July 1, 2013.
Respondent is not affiliated with Complainant and is not licensed to use Complainant’s SSS or ATLANTIC SOUTHERN INSURANCE marks or to register or use domain names incorporating those marks.
Respondent registered the Disputed Domain Name on April 4, 2015. 5. Parties’ Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant’s SSS and ATLANTIC SOUTHERN INSURANCE marks because the Disputed Domain Name consists of the composite of the trademark initials “ASI” and the trademark SSS. Complainant also alleges that Respondent has never been licensed or authorized to use the marks and that Respondent’s conduct is in bad faith, as evidenced both by the similarity of the Disputed Domain Name to Complainant’s marks and by Respondent’s use of the Disputed Domain Name to perform fraudulent transactions. Complainant alleges that the combination of the two marks within the Disputed Domain Name enhances the likelihood of confusion because it is publicly known that both marks are used in connection with good or services provided by Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel finds that Complainant has met each of the elements required by the Policy. In particular, the Disputed Domain Name is confusingly similar to Complainant’s marks; Respondent has no rights or legitimate interests in the Disputed Domain Name; and Respondent registered and uses the Disputed Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has shown that it has rights in both the SSS and ATLANTIC SOUTHERN INSURANCE marks. The SSS mark has been registered as a trademark with the United States Patent and Trademark Office since October 12, 2010, and has been used in commerce since 2005. The ATLANTIC SOUTHERN INSURANCE mark has been used in commerce continuously and uninterruptedly in connection with insurance services since at least 1945. At the time Complainant acquired the ATLANTIC SOUTHERN INSURANCE mark in 2013, the Atlantic Southern Insurance Company was using the mark in connection with a portfolio then estimated at USD 9 million, with operations in Puerto Rico, the United States Of America, United States Virgin Islands, British Virgin Islands, Anguilla, and Costa Rica. Such use in commerce provides evidence for the existence of a common law trademark subject to the provisions of the Policy. See Uitgeverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575 (“[G]iven that the Complainant has provided evidence to the effect that he has been using the mark CRUX in association with its business for a number of years prior to the Domain Name being registered, the Panel is of the opinion that the Complainant has provided adequate grounds for a finding that he holds rights in the marks.”).
The Disputed Domain Name is identical or confusingly similar to the ATLANTIC SOUTHERN INSURANCE and SSS trademarks. The Disputed Domain Name consists of the composite of the trademark initials for “Atlantic Southern Insurance” “ASI” and the trademark SSS. The combination of both trademarks within the Disputed Domain Name enhances the likelihood of confusion since it is publicly known that both marks are used in connection with good or services provided by Complainant. Moreover, the use of an abbreviation to substitute for the ATLANTIC SOUTHERN INSURANCE trademark does not sufficiently distinguish the resulting domain name from the mark. See, e.g., Express Messenger Systems, Inc. v. Golden State Overnight,WIPO Case No. D2001-0063 ( is confusingly similar to California Overnight mark); Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts,WIPO Case No. D2001-0381 (, , and are confusingly similar to Wall Street Journal mark).
Further, in making an inquiry as to whether a trademark is identical or confusingly similar to a domain name, the Top-Level Domain, in this case “.net,” may be disregarded. See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762.
Respondent does not rebut the above showing or make any contrary claim or assertion. Complainant has therefore shown that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant has submitted its United States Patent and Trademark Office registration certificates for the SSS trademark, establishing its prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Moreover, the ATLANTIC SOUTHERN INSURANCE mark has been used in commerce continuously and uninterruptedly since at least 1945. No license permitting such use has ever been granted to Respondent regarding the SSS or ATLANTIC SOUTHERN INSURANCE marks.
Respondent has not used, and is not using, the Disputed Domain Name in connection with any bona fide offering of goods or services. Complainant submitted evidence that Respondent has used the Disputed Domain Name as a means to misappropriate funds from third parties by passing itself off as Complainant. Such use eradicates any possibility of a legitimate noncommercial or fair use of the Disputed Domain Name. Committing fraud upon customers who think that they are dealing with the Complainant is not a bona fide offering of goods or services. See, e.g., FIL Limited v. , Domain Discreet Privacy Service / Igor Ivanov,WIPO Case No. D2014-0131).
Respondent does not rebut the above showing or make any contrary claim or assertion. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Complainant presented evidence showing that the Disputed Domain Name has been registered and is being used in bad faith. Specifically, Complainant established that the Disputed Domain Name is used to misappropriate funds from third parties. Complainant’s customers have received electronic communications from emails associated with the Disputed Domain Name requesting that funds be transferred to an apparently fraudulent organization. Complainant has also been the subject of a civil lawsuit arising out of Respondent’s fraudulent use of the trademarks.
The evidence indicates that Respondent intentionally registered and used the Disputed Domain Name to create confusion regarding the source of sponsorship, affiliation, or endorsement of the website linked to the Disputed Domain Name, and to use the goodwill and reputation generated by the Complainant to carry out fraudulent transactions. Said use must be considered a bad-faith appropriation of the SSS and ATLANTIC SOUTHERN INSURANCE trademarks because the only known use of the Disputed Domain Name is for the purpose of disrupting the business of the Complainant.
Respondent has not rebutted the above showing in any way. Accordingly, the Panel concludes that the Complainant has met its burden of proving that the Disputed Domain Name was registered and 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.
Michael A. Albert
Sole Panelist
Date: March 21, 2016
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