Complainant is Amica Mutual Insurance Company, United States of America (“United States”), represented by Hinckley, Allen & Snyder, LLP, United States.
Respondent is Contact Privacy Inc. Customer 1244209250, Canada / Mark Parsons, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2019. On June 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 Complainant on June 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 26, 2019.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2019.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 24, 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
Complainant is the owner of registrations for the word, and word and design, trademark and service mark (hereinafter “trademark”) AMICA on the Principal Register of the United States Patent and Trademark Office (“USPTO”), including for the word trademark registration number 666,397, registration dated August 26, 1958, in international class (IC) 36, covering underwriting fire and casualty insurance; registration number 354,683, registration dated February 22, 1938, in IC 38, covering serial publication as further specified, and; registration number 1,911,774, registration dated August 15, 1995, in IC 36, covering underwriting life insurance.
Complainant writes over USD 1 billion in insurance premiums annually in connection with its AMICA trademark, with hundreds of thousands of customers and 44 offices across the United States. Complainant has provided evidence that it was established in 1907 and is the oldest mutual insurer of automobiles in the United States.1 According to Complainant, it has spent over USD 778 million in advertising expenditures in connection with its branded services during the past 10 years. Complainant operates a number of commercial websites, including at , and .
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered (or acquired the registration of) the disputed domain name on March 25, 2019. According to an ICANN WhoIs record provided by Complainant, the creation date of the record of registration for the disputed domain name is March 25, 2019.
The disputed domain name does not resolve to an active website. Complainant has provided substantial evidence that Respondent used the disputed domain name as the domain identifier in an email address that was used to post job opportunities alleged to be associated with Complainant on job bulletin boards of various colleges and universities as part of a scheme to obtain detailed information from job seekers. Respondent falsely represented himself as a consultant and/or agent of Complainant. Complainant became aware of Respondent’s activities when contacted by a university career center officer seeking to validate his employment status with Complainant. Complainant was able to secure copies of email exchanges between Respondent and several job applicants that include reference to forthcoming financial exchanges.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the AMICA trademark and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent registered the disputed domain name decades after Complainant began using its trademark; (2) Respondent is not commonly known as “Amica”; (3) the disputed domain name has not been used in connection with a bona fide offer of goods or services and; (4) Respondent has used the disputed domain name in connection with deceptive behavior.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) use of the disputed domain name in connection with an active website is not required for a finding of bad faith; (2) Respondent is using the disputed domain name in an email address as part of a scheme to defraud third parties; (3) Respondent registered the disputed domain name deliberately to capitalize on the goodwill associated with Complainant’s well-known trademark, and (4) Respondent has used a privacy shield in connection with the disputed domain name to conceal his identity.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by the individual Respondent, although it was delivered to the privacy shield’s address. It does not appear there was difficulty in delivery of the emails transmitted by the Center. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark AMICA including by registration at the USPTO and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the AMICA trademark.
The disputed domain name directly incorporates Complainant’s distinctive AMICA trademark and appends the term “mutualinsurance”. The term “mutual insurance” refers to a form of insurance company,2 and is a form of entity through which Complainant furnishes insurance. Addition of that term to Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name.3 The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark within the meaning of the Policy.
The Panel determines that Complainant has established rights in the trademark AMICA and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Complainant has provided substantial evidence that Respondent has used the disputed domain name for purposes of misrepresentation of identity and to deceive Internet/email users to secure information for use in an apparent scheme to defraud. Such evidence is unrebutted.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy. C. Registered and Used in Bad Faith
Complainant has provided substantial evidence that Respondent registered and is using the disputed domain name for purposes of misrepresentation of identity and to deceive and defraud Internet/email users. Such evidence is unrebutted.
Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of email communications intending to deceive and defraud Internet users. Respondent was manifestly aware of Complainant’s rights in its trademark when he undertook this action.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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 Complainant.
Frederick M. Abbott
Sole Panelist
Date: August 1, 2019
1 A "mutual insurer" is an insurance company owned by its policyholders. See , panel visit of August 1, 2019.
2 Id.
3 The generic Top-Level Domain “.net” is not relevant to the confusing similarity assessment in circumstances such as those present here.
Full & Egal Universal Law Academy