The Complainant is Focus Holdings, LLC of Sunrise, Florida, United States of America (“US”), represented by Frank Weinberg Black, P.L., United States.
The Respondent is Светлана Мурина of Pavlovo-Posadsky, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2019, the Registrar 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 on January 25, 2019 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 29, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on January 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2019.
The Center appointed David Stone as the sole panelist in this matter on March 1, 2019. 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 the owner of the US trade mark MACNEILL GROUP (the “Mark”), registered in Nice classes 35 and 36 on August 26, 2014 with registration number 4591927. The Mark is used in relation to insurance services.
The United States Automobile Association (“USAA”) is not a party to these proceedings, but owns a number of US registered marks with the textual element “usaa”. The USAA operates in an industry related to that of the Complainant.
The disputed domain name was registered on November 21, 2018 and resolves to a webpage displaying adult-oriented content.
On December 24, 2018 the Complainant sent a cease-and-desist letter to the Respondent explaining its rights and seeking to resolve the dispute amicably, but received no response. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to the combination of the dominant portion of the Mark (that is, MACNEILL) and USAA.
The Complainant contends that the Respondent has no rights or legitimate interests in the Mark or the disputed domain name, and failed to release the disputed domain name to the Complainant despite receiving the cease-and-desist letter.
The Complainant contends that the disputed domain name was registered to prevent the Complainant from using the Mark in a corresponding domain name and with the intention of selling it to the Complainant. The website to which the disputed domain name resolves contains adult content and is being used to tarnish the Complainant’s reputation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name combines “macneill” and “usaa”. The Panel is satisfied that the Complainant has rights in the Mark, by virtue of its registration and use. “Macneill” is the dominant part of the Mark, given that the remaining part, “group”, is a descriptive term. The disputed domain name contains the whole of the dominant part of the Mark. The additional presence of another term (“usaa”) used in the insurance industry would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.8. The Panel therefore finds that the condition in paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant’s contention that the Respondent has no right to use the Mark and is not known by the disputed domain name is sufficient to establish a prima facie case that the Respondent has no legitimate interest in the disputed domain name. In failing to respond either to the Complainant’s cease-and-desist letter or this Complaint, the Respondent has failed to rebut this case. See Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg,WIPO Case No. D2016-0524. The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
Although it is possible to register and use a domain name legitimately to provide access to pornography, doing so using a domain name confusingly similar to a trade mark owned by another and in which the registrant has no rights can be interpreted only as an attempt to divert Internet traffic for commercial gain. Along with the obvious risk of tarnishment of the Mark, this leads to the clear conclusion that the disputed domain name was registered in bad faith. See Averitt Express, Inc. v. Protection of Private Person / Roman Emec,WIPO Case No. D2018-0249; Sothys International v. Siamak Khoshkholgh Sima /Domain ID Shield Service Co., Ltd,WIPO Case No. D2013-1494. The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(iii) of the Policy. 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.
David Stone
Sole Panelist
Date: March 15, 2019
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