The Complainant is Combined Insurance Company of America (“Combined Insurance”), United States of America (“United States”), represented by Fish & Richardson P.C., United States.
The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 28, 2020, 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. The Center verified that the Complaint 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 May 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2020. The Center appointed Karen Fong as the sole panelist in this matter on June 3, 2020. 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 a provider of insurance services in the United States and Canada founded nearly 100 years ago. It is listed as one of Ward’s top 50 performing Life Insurance Companies with an A+ rating from the Better Business Bureau. The Complainant has used the names COMBINED INSURANCE and COMBINED in connection to insurance services since at least 1940. The Complainant owns trade mark registrations for COMBINED INSURANCE, COMBINED and COMBINED together with other elements including the following: - United States Registration No. 669093 for COMBINED INSURANCE COMPANY OF AMERICA, registered on October 28, 1958; (individually and collectively the “Trade Mark”) The Complainant owns and operates the website connected to the domain name The Respondent registered The Respondent has been the named respondent on a number of UDRP cases which relate to domain names corresponding to the distinctive trade marks belonging to other trade mark owners, all of which have resulted in orders for the domain names to be transferred. These include the following: Case Number Respondent’s Domain Name Registered Trademark Trademark Owner WIPO Case No. D2020-0501 TOMMY BAHAMA Tommy Bahama Group, Inc. WIPO Case No. D2020-0307 ZIPRECRUITER ZipRecruiter Inc. WIPO Case No. D2020-0226 MICHELIN Compagnie Générale des Etablissements Michelin WIPO Case No. D2020-0168 UNLIMITED VACATION CLUB and APPLE VACATIONS The Coryn Group II, LLC WIPO Case No. D2020-0114 XFINITY Comcast Corporation WIPO Case No. D2020-0082 O2 and MY O2 O2 Worldwide Limited WIPO Case No. D2020-0071 TEVA Teva Pharmaceutical Industries Limited WIPO Case No. D2020-0043 LINCOLN Ford Motor Company WIPO Case No. D2020-0018 SKYSCANNER Skyscanner Limited WIPO Case No. D2019-3160 ALL SAINTS and ALLSAINTS All Saints Retail Limited 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that: (i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) The Domain Names were registered and are being used in bad faith. B. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case, the Domain Names consist of misspellings of the Complainant’s Trade Mark. One of them has an additional letter “s” at the end of the Trade Mark COMBINED INSURANCE and the other comprises the Trade Mark COMBINED plus the abbreviation of “insurance”, “ins” and the geographical term “ny”. Section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that a domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element. In this case, the Trade Mark is clearly recognizable in the Domain Names. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview 3.0). The Panel finds that the Domain Names are confusingly similar to the Trade Marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that the Respondent is not commonly known by the Domain Names. It has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Names or for any other purpose. Further, the display of pay-per-click links in this manner does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Names. The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply from the Respondent. The Respondent is a serial cybersquatter and has also not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names given the Trade Mark was registered prior to registration of the Domain Names, the Domain Names consist of misspellings of the Trade Mark and the fact that the Websites are pay-per-click websites which has links to websites of the Complainant’s competitors. Further the fact that the Respondent is a cybersquatter with a track record of registering domain names comprising trade marks of third parties adds to the evidence of lack of good faith in registering the Domain Names. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with the fact that the Domain Names are being used as an instrument of fraud nor any explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain Names in bad faith. The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites are pay-per-click sites which have been set up for the commercial benefit of the Respondent. It is highly likely that web users when typing the Domain Names into their browser, or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names. The Respondent employs the fame of the Trade Mark to mislead users into visiting the Websites instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites and the products sold on them are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy. In addition to the above, the Respondent has a record of registering domain names which correspond to the marks of individual brand owners as outlined above. The above is an indication that it is engaged in a pattern of bad faith conduct (Section 3.1.2 of WIPO Overview 3.0). The Panel therefore concludes that the Domain Names were registered and are being used in bad faith. 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 Domain Names Karen Fong
- United States Registration No. 2431474 for COMBINED & Design, registered on February 27, 2001;
- United States Registration No. 3435758 for COMBINED INSURANCE & Design, registered on May 27, 2008;
- United States Registration No. 3573647 for COMBINED INSUIRANCE LET’S MAKE THIS EASY, registered on February 10, 2009;
- United States Registration No. 5783614 for COMBINED INSURANCE, registered on June 18, 2019;
- United States Registration No. 5777586 for COMBINED INSURANCE, registered on June 11, 2019;
- United States Registration No. 5046977 for COMBINED WORKSITE SOLUTIONS, registered on September 20, 2016;
- United States Registration No. 4841171 for COMBINED WORKSITE SOLUTIONS, registered on October 27, 2015.
Sole Panelist
Date: June 18, 2020
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