The Complainant is Chubb INA Holdings Inc., United States of America (“United States”), represented by Fish & Richardson P.C., United States.
The Respondent is Simon Mitcalfe, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2020, 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 June 10, 2020, 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 June 13, 2020. 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 June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. The Center received an email from the Respondent on June 17, 2020, wanting to explore settlement options. The Complainant did not request a suspension within the given timeline therefore, the proceedings continued. Accordingly, the Center notified the commencement of panel appointment on July 7, 2020. The Center appointed Zoltán Takács as the sole panelist in this matter on July 15, 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. The language of the Registration Agreements for the disputed domain names is English which the Panel establishes as the language of this administrative proceeding. 4. Factual Background The Complainant is the world’s largest publicly traded property and casualty insurance company and the largest commercial insurer in the United States. The Complainant provides a broad range of insurance and reinsurance products through operations in the United States and 53 other countries worldwide. With over 31,000 employees worldwide the Complainant serves property and casualty insurance customers from some 650 offices around the world. The Complainant owns numerous trademarks consisting of or comprising the CHUBB trademark, including the Unites States Trademark Registration No. 1729813 for the word mark CHUBB registered on November 3, 1992, for the services of class 36 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks. Since September 7, 1995, the Complainant owns the domain name The disputed domain name The Complainant contends that the disputed domain name The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Complainant claims that the Respondent has registered and – through PPC links - used the disputed domain name to intentionally and unlawfully target its CHUBB trademark and exploit its reputation for its own commercial benefit. The Complainant requests that the disputed domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (i) the disputed domain name is identical or confusingly similar to a trademark 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 Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant presented proper evidence of having exclusive rights in the CHUBB trademark. For the purpose of this proceeding, the Panel establishes that the United States Trademark Registration No. 1729813 for the word mark CHUBB satisfies the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. The disputed domain name incorporates the Complainant’s CHUBB trademark in its entirety and is clearly recognizable within the disputed domain name. Inclusion of the descriptive, geographical term “world” does nothing to alleviate confusing similarity with the Complainant’s trademark, which stems from the use of the Complainant’s CHUBB trademark in the disputed domain name. Accordingly, the Panel finds that the disputed domain name Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the CHUBB trademark. The Complainant has never authorized the Respondent to use its CHUBB trademark in any way, and its prior rights in the CHUBB trademark long precede the date of registration of the disputed domain name. According to section 2.1 of the WIPO Overview 3.0, while 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 the 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 Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. The disputed domain name has been used for a parking page containing PPC links to third parties insurance services, as well as links to “Chubb Home Insurance” and “Chubb Insurance”. In view of the Panel this demonstrates that the Respondent was clearly aware of the Complainant’s CHUBB trademark at the time of registration of the disputed domain name and has targeted it for his own financial benefit. It’s been a consensus view among UDRP panels that use of a domain name to host a parked page containing PPC links competing and/or capitalizing on the recognition and goodwill of the complainant’s mark, or otherwise misleading Internet users constitutes bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. On June 17, 2020, the Respondent sent an email to the Center confirming receipt of the case materials and claiming that he “bought the domain name legally and through the correct channels” as well as that he “would like to resolve the matter amicably” through settlement and be “happy to discuss a figure”. The Respondent has not provided any evidence in support of these claims and has failed to respond to the Complaint. By doing so the Respondent choose not try to counter compelling evidence submitted by the Complainant and present any, let alone credible evidence regarding his lawful registration and use of the disputed domain name. All these facts and circumstances convince the Panel that the disputed domain name was registered and used with intent to specifically target the Complainant’s CHUBB trademark and its business rather than for legitimate speculation as claimed by the Respondent, which is further indication of bad faith. Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and paragraph 4(a)(iii) of the Policy is satisfied. 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 Zoltán Takács
Sole Panelist
Date: July 29, 2020
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