The Complainant is Nationwide Mutual Insurance Company, United States of America (“U.S.”), represented by Dinsmore & Shohl LLP, U.S..
The Respondent is Domains by Proxy, LLC, U.S. / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name (“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 August 23, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 3, 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 September 6, 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 11, 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 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 10, 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 operates a large insurance and financial services business ranked in the Fortune 100 in the U.S. with more than 30,000 employees USD 158 billion in statutory assets and combined statutory revenue of USD 43.3 billion in 2018. The Complainant holds more than 100 registrations for the trademark NATIONWIDE and variants, in the U.S., which it uses to designate predominantly real estate, insurances and financial services. U.S. Trademark Registration No. 854,888 shows a first use date of 1955 and has been registered since August 13, 1968.
The Respondent registered the Disputed Domain Name on August 20, 2018.
The Disputed Domain Name resolves to a rotating number of websites that contain advertisements for competitors of the Complainant including for financial services and insurances. 5. Parties’ Contentions A. Complainant
The Complainant cites its U.S. trademarks registration Nos. 854,888 and 2,788,512, and 3,319,683 for the marks NATIONWIDE, NATIONWIDE FINANCIAL and NATIONWIDE FINANCIAL NETWORK respectively as prima facie evidence of ownership.
The Complainant submits that the mark NATIONWIDE is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the NATIONWIDE trademark and that confusing similarity is not removed by the additional letter “a”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a rotating choice of websites that offer products and services that compete with those of the Complainant, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name (citing: Société Nationale des télécommunications: Tunisie Telecom v. Isamel Leviste,WIPO Case No. D2009-1529).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks NATIONWIDE and NATIONWIDE FINANCIAL in the U.S.. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the NATIONWIDE FINANCIAL trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark NATIONWIDE FINANCIAL, (b) with the addition of the letter “a” to the word “financial” so that the second syllable contains a double “a”, and (c) followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “nationwide finaancial”.
It is also well-established that where a domain name incorporates a complainant’s trademark in its entirety, it may be confusingly similar to that mark despite the addition of a hyphen or dictionary indicia such as, in this case, “a” (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, supra).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a web page dominated by links that seek to illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy.
On any objective view, the Respondent is not a reseller with a legitimate interest in the Disputed Domain Name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name by engaging in “typosquatting” and misleadingly diverting consumers, then displaying commercial advertisements for competitor products and services, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web pages.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that a complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark NATIONWIDE is so famous a mark for insurances and financial services that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Nationwide Mutual Insurance Company v. Forum LLC,WIPO Case No. D2006-0309(“The Domain Name incorporates the well-known trade marks of the Complainant”); Nationwide Mutual Insurance Company v. Nationwide Financial Services Group, Inc.,WIPO Case No. D2011-0095 (“The Complainant is a nationally-renown company, and its trademarks are well known”); Nationwide Mutual Insurance Company v. Privacy Administrator, Anonymize, Inc. / “Manu Miglani”, Privacy Gods Limited / Epik Inc.,WIPO Case No. D2019-1816, (“NATIONWIDE is a well-known and long-established trademark in the United States”).
Further, a gap of 10 years between the registration of a complainant’s trademarks and a respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name more than sixty years after the Complainant established trademark rights in the NATIONWIDE mark.
The uncontested evidence that the Disputed Domain Name has been used by the Respondent to redirect visitors looking for NATIONWIDE FINANCIAL services or, alternatively, the Complainant’s websites, to one of a rotating number of websites that contain advertisements for competitors of Complainant, has been found by previous UDRP panels to constitute bad faith registration and use under the Policy: e.g.: CenturyLink Intellectual Property, LLC v. A Domain Privacy / Transure Enterprise Ltd,WIPO Case No. D2016-2597; Comerica Bank v. Isaac Goldstein,WIPO Case No. D2015-1997; Dayton Electric Manufacturing Co. v. Damon Nelson - Manager, Quantec, LLC / Novo Point, LLC,WIPO Case No. D2017-1667.
This Panel notes that the Respondent Carolina Rodrigues is named in no less than 66 separate previous proceedings under the Policy, e.g.: Heaven Hill Distilleries, Inc. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-2080; The Citco Group Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-2050; Lumber Liquidators, Inc. v. Registration Private, Domains By Proxy, LLC / Fundacion Comercio Electronico, Carolina Rodrigues,WIPO Case No. D2019-2014; Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1991. It is reasonable to infer from these that the Respondent has engaged in a pattern of cybersquatting and typosquatting.
In this case, the Complainant has a well-known trademark, no response to the Complaint has been filed, and the Respondent’s identity is concealed by a privacy service, no doubt to mask the pattern of behavior. The consensus view in paragraph 3.2 of WIPO Overview 3.0, and also this Panel, regards such conduct as prima facie evidence of bad faith registration and use of the Disputed Domain Name in the absence of a response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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.
Nicholas Weston
Sole Panelist
Date: October 24, 2019
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