The Complainant is ACCC Insurance Company, United States of America (“United States”) represented by Madan Law, United States.
The Respondent is Humberto Chavez of Cuba. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2019, 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 April 12, 2019 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 April 15, 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 April 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on May 16, 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 an insurance company, based in Houston, Texas, United States, which specializes in property and casualty insurance, in particular the provision of automobile polices for consumers. It is the owner of a United States service mark, registration no.3,693,694, for ACCC INSURANCE COMPANY in class 9, registered on October 6, 2009. It owns other United States service marks, including registration no.3948224, for DRIVE WITH THE EAGLE, registered on April 19, 2011 in classes 35 and 36.
The disputed domain name was registered on March 24, 2012. It resolves to a website which purports to be that of the Complainant in that it is headed “ACCC Insurance Company” (appearing alongside an eagle motif), there is an online tool which purports to provide “FREE ACCC Auto Insurance Quotes” and subsequent pages contain information which purport to relate to the Complainant’s business, in particular telephone numbers for policy/billing issues. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its service mark for ACCC INSURANCE COMPANY, full details of which are given above, and says that it has been using and promoting this mark for over twenty years. The generic Top Level Domain (“gTLD”) “.com” is disregarded for the purpose of comparing the disputed domain name with its trade mark. Accordingly, the disputed domain name is identical to the Complainant’s trade mark.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found any evidence to show that the Respondent has used, or has made any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services.
The Respondent has not provided his actual contact information on his website. Rather, he has provided lists of locations and telephone numbers that belong to the Complainant, some of which are old, whilst others are current. The Respondent is trying to confused consumers into believing that they are on the Complainant’s website. This is likely to be in order to enable the Respondent to gain pay-per-click income or so that it can gather the contact information of unwitting consumers and sell that information to third parties as part of a phishing scheme. In addition, the Respondent has not been known by the disputed domain name and owns no registered trade mark rights in any variation of the words “ACCC”, “insurance” and/or “company”. Moreover, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
Decisions of panels under the Policy recognize that a complainant is required only to show prima facie evidence that a respondent lacks any rights or legitimate interests in a domain name, at which point the burden shifts to the respondent. The Complainant has established a prima facie case and the burden of showing a legitimate interest in the disputed domain name has therefore shifted to the Respondent.
Lastly, the Complainant says that the disputed domain name has been registered and is being used in bad faith. Whilst there is no evidence of the disputed domain name having been registered or acquired primarily for the purposes of selling it to the Complainant, nor that there has been a pattern of such behavior by the Respondent, the Respondent is still acting in bad faith.
As the Complainant holds exclusive trade mark rights to ACCC INSURANCE COMPANY in the United States, the Respondent has registered the disputed domain name for the purpose of disrupting the Complainant’s business by misleading consumers attempting to utilize its services into believing that they are on the Complainant’s website when really they are not. The Respondent is accordingly using the disputed domain name intentionally to attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s registered trade mark. This is evidenced by the fact that the Respondent has not listed its own information on the website but rather contact information that belongs to the Complainant for use in its business dealings. Due to this purposeful disruption of the Complainant’s business as well as the Respondent’s use of its website for commercial gain and in an obvious attempt to confuse consumers, the Respondent has clearly exhibited bad faith.
The Complainant’s allegations are supported by the decisions of previous UDRP panels that have found that the use of phishing schemes to obtain personal information from Internet users constitutes bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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 Complainant has produced evidence of its service mark registration for ACCC INSURANCE COMPANY, as more particularly set out above.
As the Complainant has asserted, in considering whether a domain name is identical or confusingly similar to a complainant’s trade marks, it is established practice to disregard the applicable generic Top-Level Domain (“gTLD”) suffix, that is “.com” in the case of the disputed domain name, because it is a technical requirement of registration. The remaining element of the disputed domain name, “accc insurance company”, is identical to the Complainant’s ACCC INSURANCE COMPANY service mark. The Panel accordingly finds that the disputed domain name is identical to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or prepared to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is explained at section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
The second and third circumstances are inapplicable: there is no evidence before the Panel that the Respondent is commonly known by the disputed domain name, nor is the Respondent’s use of the disputed domain name noncommercial in character.
In assessing whether or not the Respondent has used or prepared to use the disputed domain name in connection with a bona fide offering of goods and services, it is necessary to take into account two notable features of the circumstances which have given rise to the Complaint. The first is that the disputed domain name was registered by the Respondent over seven years ago. There is no evidence before the Panel that the use made by the Respondent of the disputed domain name has changed during that period. Having regard to the serious criticisms which the Complainant makes of the Respondent’s conduct and the nature of its website, it is surprising that the Complainant has waited so long before filing its Complaint in respect of the disputed domain name and that it has not offered any explanation as to why it did not do so earlier. However, to the extent that there are any arguments to advance relating to the timing of the Complaint, these are for the Respondent to make and it has not done so. Moreover, as explained at section 4.17 of WIPO Overview 3.0; “Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”.
Second, whilst the Complainant has briefly mentioned that it has a website, it has not provided any information about it. It would have been helpful for the Panel, in assessing the Complainant’s submissions, to have been able to compare the parties’ websites. Section 4.8 of the WIPO Overview 3.0 explains that; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”. In an attempt to find the Complainant’s website, the Panel has undertaken a search on Google for “ACCC Insurance Company Texas”. The search produced a result featuring a link to “ACCC Insurance Company”, which is evidently intended to direct the user to a website at . However, on the two occasions the Panel tried to access the website, an error message was produced which stated “This site can’t be reached”.
In an attempt to find the Complainant’s website, the Panel has undertaken a search on Google for “ACCC Insurance Company Texas”. The search produced a result featuring a link to “ACCC Insurance Company”, which is evidently intended to direct the user to a website at . On the two occasions the Panel tried to access the website, an error message was produced which stated “This site can’t be reached”. However, in relation to this specific element of the Complaint, the Complainant’s obligation is to establish a prima facie case. In this respect, the Complainant’s assertion that the Respondent’s website has no connection with it and is a sham is unchallenged by the Respondent and the Panel accordingly accepts that the Complainant has, at least made out a prima facie case. Furthermore, there is sufficient detail and substance in the Complainant’s allegations for the ball to have been placed squarely in the Respondent’s court to rebut them. The requirement for it to do so is particularly important in the light of section 2.13.1 of the WIPO Overview 3.0, which explains that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. In addition, as the disputed domain name is identical to the Complainant’s trade mark, it carries a high risk of implied affiliation; see section 2.5.1 of the WIPO Overview 3.0.
However, in relation to this specific element of the Complaint, the Complainant’s obligation is to establish a prima facie case. In this respect, the Complainant’s assertion that the Respondent’s website has no connection with it and is a sham is unchallenged by the Respondent and the Panel accordingly accepts that the Complainant has, at least made out a prima facie case. Furthermore, there is sufficient detail and substance in the Complainant’s allegations for the ball to have been placed squarely in the Respondent’s court to rebut them. The requirement for it to do so is particularly important in the light of section 2.13.1 of the WIPO Overview 3.0, which explains that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. In addition, as the disputed domain name is identical to the Complainant’s trade mark, it carries a high risk of implied affiliation; see section 2.5.1 of the WIPO Overview 3.0.
The burden of production has therefore shifted to the Respondent to attempt to rebut the Complainant’s assertions. As it has not responded to the Complaint, it has failed to do so. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s assertion that it has used and promoted its trading style, ACCC INSURANCE COMPANY, for over 20 years, albeit its trade mark was not registered until October 2009. The “ACCC” element of the Complainant’s mark is relatively distinctive. The Panel therefore infers that the Respondent was aware of the Complainant as at the date of registration of the disputed domain name in March 2012, not just for this reason but because the only known use of the disputed domain name following registration has been to resolve to a website which purports to be owned by, or operated on behalf of, the Complainant.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls within these circumstances in that it points to a website which purports to be operated by the Complainant and to offer the Complainant’s services. The belief of Internet users that the Respondent’s website is operated by, or on behalf of, the Complainant will be reinforced because of the identically between the disputed domain name and the Complainant’s ACCC INSURANCE COMPANY trade mark. Moreover, there is no conceivable good faith use which the Respondent could make of the disputed domain name and the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. This points clearly to bad faith registration and use; see, by way of example, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447.
For these reasons, the Panel finds that the disputed domain name was both registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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.
Antony Gold
Sole Panelist
Date: May 30, 2019
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