The Complainant is Religare Health Insurance Company Limited, India, represented by Saikrishna & Associates, India.
The Respondent is Name Administration Inc., Domain Administrator, Grand Cayman, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2019. On August 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 2, 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 September 6, 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 September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. On October 8, 2019, the Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The due date for Response was October 13, 2019. The Response was filed with the Center October 13, 2019. The Center appointed Willem J. H. Leppink, Harini Narayanswamy, and Richard G. Lyon as panelists in this matter on November 15, 2019. The Panel finds that it was properly constituted. Each member of 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 a specialized health insurer offering health insurance services. The Complainant launched its first insurance product in June 2012, under the name “Care”. The Complainant is the owner of several trademark registrations in India for figurative trademarks containing the word element CARE. This includes, but is not limited to, the Indian trademark (figurative mark) with registration number 2278885, registered on February 7, 2012, for services in class 35, and the Indian trademark (figurative mark) with registration number 2278886, registered on February 7, 2012, for services in class 36. The aforementioned trademarks will hereinafter in singular be referred to together as the “Trademark”. The Complainant does not own any wordmark registrations consisting of the word “care”. The Complainant is the owner of various domain names that incorporate “care”, including The Domain Name was registered on August 12, 2015, by the Respondent. The Domain Name resolves to an advertising page containing per-per-click hyperlinks. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The Domain Name is confusingly similar to the Trademark. The Domain Name includes the Trademark, to which the descriptive element “health insurance” is added. “Health insurance” enhances the confusion as it is the sector in which the Complainant operates. The Respondent has no rights or legitimate interests in the Domain Name. The Domain Name was registered three years after the Complainant started using the Trademark. In addition, the Respondent is not making use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the Domain Name and does not have a connection to the Trademark. The Domain Name was registered and is being used in bad faith. The Respondent ought to have been aware of the Complainant and its Trademark. The Respondent is parking the Domain Name without any actual use, thereby causing harm to the Complainant’s business. B. Respondent The following is a summary of the response filed by the Respondent. The Respondent submits that the Complainant has not demonstrated that the Domain Name is identical or confusingly similar to the Trademark. The Complainant is the proprietor of a figurative mark with a stylization of the word “care”. The word “care” in connection with health insurance is not distinctive of the Complainant. The Respondent is a well-known provider of keyword search advertising services in relation to domain names. Usage of the words “care” and “health insurance” as descriptive keywords is a legitimate use of descriptive words. The words compose the name of generic products for which the Respondent is advertising on the website to which the Domain Name resolves. The Respondent did not know the Complainant or the Trademark, nor should the Respondent have known the Complainant or the Trademark. The Respondent is established in Grand Cayman, whilst the Complainant is located in India. The Complainant is not well-known in countries other than India. In addition, the Complainant has failed to show any evidence that the Respondent registered and used the Domain Name in bad faith. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark. The Complainant has sufficiently shown that it has rights in the Trademark. As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. The figurative elements of the Trademark are in general disregarded for purposes of assessing identity or confusing similarity under the first element. The existence of such elements would be relevant to the Panel’s assessment of the second and third elements, e.g., in considering possible legitimate trademark co-existence or scenarios where the textual elements correspond to a dictionary term (see section 1.10 of WIPO Overview 3.0). In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of (the word element of) the Trademark and the words “health insurance”. In addition, with regard to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” generic Top-Level Domain (“gTLD”)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness. For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Panel need not make a finding in relation to the second element of the Policy in view of its findings concerning bad faith under the third element, as set out below. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the Domain Name has been both registered and used in bad faith by the Respondent. The Panel finds that the Complainant has not proven that the Respondent registered the Domain Name in bad faith. In order to establish that the Domain Name has been registered in bad faith, the Complainant must show that the Respondent was aware, should have been aware or ought to have been aware of the Complainant and its Trademark (see for instance uwe GMbH v. Telepathy, Inc,WIPO Case No. D2007-0261). The Complainant could have made its case, if the Complainant could have e.g., substantiated that there would not have been any plausible explanation of why the Respondent had registered the Domain Name. If e.g., the Domain Name would have consisted of a coined word such plausible explanation for why the Respondent ought to have been aware, could have been acceptable to the Panel. However, the Domain Name consists of the individual dictionary terms “care”, “health”, and “insurance”, that also in their combination could normally be descriptive, despite the somewhat odd juxtaposition, being that “healthcareinsurance” would be a more logical order. Especially such uncommon juxtaposition in combination with extensive use, could under certain circumstances lead to a valid trademark overcoming the descriptiveness of this combination of dictionary terms. The Panel notes that despite the fact that the case file shows many occurrences of a combination of these three word elements, the Complainant seems (at least on the evidence before the Panel) to be the only party making use of these three elements in this specific order, i.e., “Care Health Insurance”. It should be noted that the Complainant cannot rely on specific trademark rights in relation to that combination of three elements, namely the Complainant’s mark plus two dictionary terms. Complainant has asserted some rights in the (figurative) Trademark. Whether such rights (in India) would grant protection for also the word element “care” does not have to be assessed in light of the following considerations. The Complainant has submitted evidence on the notoriety in India of the Trademark (the figurative CARE trademark) and the Complainant’s activities in India, but has not submitted any evidence proving that the Trademark and the Complainant’s activities are well-known anywhere else in the world. In addition, and notwithstanding the global nature of the Internet, there has not been any evidence put forward or other substantiation, as to why the Respondent would have any knowledge about India or any connection with India, in particular in relation to health insurance, which could otherwise lead to proof or the beginning of proof that the Respondent was aware, should have been aware, or ought to have been aware of the Complainant or its Trademark. The fact that the Domain Name resolved to a pay-per-click website showing competitors of the Complainant offering health insurance, does not alter this assessment, as the terms “health” and “insurance” are included in the Domain Name. From jurisdictions other than India, Internet users are confronted with other offerings of health insurance. Therefore the pay-per-click website to which the Domain Name resolves does not provide any evidence of any specific targeting related to the Complainant. There is an obvious resemblance between the way the Complainant uses its name “Care Health Insurance”, in the uncommon juxtaposition, and the Domain Name, but the Complainant has simply not substantiated with evidence that the Respondent registered the Domain Name because of the existence of the Complainant and/or the Trademark. For these reasons, the record in this case does not establish that the Domain Name was registered in bad faith. For this reason the Panel finds it unnecessary to make an assessment of the use in bad faith as both registration and use are required to satisfy the third element. Accordingly, the Complainant cannot establish the third requirement under the Policy. 7. Reverse Domain Name Hijacking The Panel has carefully assessed whether the Complaint would constitute Reverse Domain Name Hijacking (RDNH). The majority of the Panel has come to the conclusion that it does not see sufficient ground to accept that this Complaint is brought in bad faith and that this Complaint would constitute an abuse of the administrative proceeding. In the view of the majority of the Panel a finding of a RDNH would require that the Complainant knew or in all reasonableness should have known that the Respondent had registered and used the Domain Name in good faith and that the Complainant would have, nonetheless, filed the Complaint. As considered under 6.C, an obvious resemblance exists between the dictionary terms “healthcare” and “insurance” comprising the Domain Name, and the way the Complainant uses its name “Care Health Insurance”, i.e., a somewhat uncommon juxtaposition or “rearrangement” of a series of dictionary terms, but the Complainant has not substantiated with evidence that the Respondent registered the Domain Name because of the existence of the Complainant and/or such Trademark “rearranging” as it were a group of dictionary terms. For the majority of the Panel, it is understandable that Complainant based in India, given this resemblance and not being familiar at the time of filing the Complaint whether there was any connection between the Respondent and India, decided to file the Complaint. The fact that the Complainant has not been able to prove registration in bad faith, does not necessarily mean that the Respondent has registered the Domain Name in good faith. 8. Decision For the foregoing reasons, the Complaint is denied. Willem J. H. Leppink Harini Narayanswamy Richard G. Lyon I join the Panel's decision denying the Complaint and all of its opinion except section 7. I write separately to note my view that under longstanding Policy precedent the decision should include a finding that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding. See Rules, paragraph 15(e). The following represents my views alone; my colleagues do not believe the Compliant was made in abuse of the Policy or brought in bad faith. A. Standard for a Finding of Abuse The three-member panel in Tarheel Take-Out, LLC v. Versimedia, Inc.,WIPO Case No. D2012-1668, held: "Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc.,WIPO Case No. D2007-1598.” A different three-member panel finding RDNH in Orient Express Travel Group Pty Ltd v. Mookstar Media Pty Ltd (ACN 083 167 293), WIPO Case No. DAU2015-0004, held: "In the absence of any evidence that the Respondent was targeting the Complainant or had any awareness of the Complainant, the Complainant should have been aware that the Respondent's registration and use of the Domain Name could not, under any fair interpretation of the facts, constitute bad faith registration or use". The WIPO Overview 3.0, section 4.16, lists among the reasons panels have made a finding of abuse "facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database" and "unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument." Under any of these standards the filing of the Complaint in this case warrants a finding of abuse. This Complaint is baseless and the Complainant's professional representative should have known it. My colleagues appear to endorse these standards, see Panel opinion, p. 5, 1 but excuse the Complainant or its representative because the"Complainant based in India, given this resemblance and not being familiar at the time of filing the Complaint whether there was any connection between the Respondent and India, decided to file the Complaint." The record in this case and the Rules lend no support to that view. B. The Complaint's Shortcomings The trademark upon which the complaint is based is a common word in the English language, a word moreover that is frequently used around the world in the trade names of insurance companies and insurance products. “Care” is not a common word, such as “apple” or “orange”, that has taken on distinctiveness in a field unrelated to its everyday meaning. The Complainant makes no allegation that this word has a special meaning in a language other than English. I agree with the Panel that the Complainant's evidence suffices to establish rights in a mark as required by paragraph 4(a)(i) of the Policy. As the Panel notes [pp. 5, 7] that is a low bar, see WIPO Overview 3.0, section 1.1, and it is an elemental Policy principle that rights in a mark, standing alone, carry little weight under the other two clauses of paragraph 4(a) [id., section 1.8]. Long-settled Policy precedent includes principles that use of a common word in the dictionary sense, as the Respondent has done, can be legitimate and bona fide [id. section 2.10] and that bad faith requires proof of a respondent's targeting the complainant or its mark [id. section 3.1.4]. It is a fundamental underpinning of the Policy that all allegations in a pleading must be proven, not simply alleged. [id., section 4.3; see also Policy, paragraph 4(a); Rules, paragraph 3(b)(xv)]. The Complaint before the Panel contains no allegation, let alone proof, addressing either of the first two of these matters, and it includes no evidence at all to support the allegations under paragraphs 4(a)(ii) and 4(a)(iii). The Complainant's entire case under paragraphs 4(a)(ii) and 4(a)(iii) consists of citations to cases, many of them default cases and all involving distinctive marks, and a bare allegation, unsupported by any evidence, that the Respondent knew or should have known of the Complainant or its mark. The Complaint may be fairly summarized as: “I have a mark, you don't, pay-per-click is involved, and therefore I'm entitled to your domain.” The Complaint thus fails on its face and would have failed in the absence of a response. The Panel majority is correct that the Complainant was "not . . . familiar at the time of filing the Complaint whether there was any connection between the Respondent and India." The Complaint [paragraph 7] affirmatively pleads the contrary, identifying the Respondent as located in the Cayman Islands, a jurisdiction far from India. There is no allegation and no proof as to why the Respondent or any other Cayman Islander should have known of an Indian insurance company or its descriptive trademark, and no allegation or proof of facts from which the Panel might infer the Respondent's actual knowledge or a reason to be aware of either. Given these undeniable facts, plus the utter lack of prefiling investigation discussed below, I fail to see how the mere possibility of a lucky hit – finding a hidden Indian respondent - justifies the filing of this Complaint. C. Certification of the Complaint The filing of such a complaint, especially by a professional representative, mocks the certification required by paragraph 3(b)(xiii) of the Rules, that "Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument." This by itself is yet another reason justifying a finding of abuse. That certification requires at least minimal due diligence into both the factual background justifying [or not] charges of illegitimate use and bad faith and into basic Policy precedent on matters pertinent to such facts. A quick Internet search and a careful reading of the WIPO Overview 3.0 would have shown the Complainant or its representative that there was no case here. If the Rule is to be more than the rote recital it is in the Complaint, I believe the Rule requires that at the very least. D. Conclusion I would include in the Panel's decision that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding. Richard G. Lyon 1 "[A] finding of a RDNH would require that the Complainant knew or in all reasonableness should have known that the Respondent had registered and used the Domain Name in good faith and that the Complainant would have, nonetheless, filed the Complaint."
Presiding Panelist
Panelist
Panelist (Concurring)
Date: November 29, 2019 CONCURRING OPINION
Panelist [concurring]
Date: November 29, 2019
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