WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nationwide Mutual Insurance Company v. Henry Adams

Case No. D2006-1492

 

1. The Parties

Complainant is Nationwide Mutual Insurance Company (“Complainant”), of Columbus, Ohio, United States of America.

Respondent is Henry Adams (“Respondent”), of Alhambra, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <nationwideinsurancequote.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2006. On November 23, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 27, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2007.

The Center appointed Richard W. Page as the sole panelist in this matter on January 19, 2007. 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 a mutual insurance company organized under the laws of the State of Ohio with its principal place of business at Columbus, Ohio. Complainant, together with its licensed affiliates and subsidiaries, has engaged in the business of providing numerous types of insurance throughout the United States for 80 years, the last 50 years of which have been under the trademark NATIONWIDE (the “Mark”). Nationwide was founded in Columbus, Ohio in 1926 under the name Farm Bureau Mutual Automobile Insurance Company (“FBM”). It immediately began to sell automobile insurance that same year.

In the 1930’s, FBM began offering fire and life insurance along with its core automobile insurance product. In 1955, FBM changed its name to Nationwide Mutual Insurance Company and began offering its casualty, automobile, life and health insurance under the NATIONWIDE Mark. Since at lease as early as 1955, Complainant has continuously offered casualty automobile, life and health insurance under the NATIONWIDE Mark and today offers a full line of property and casualty, commercial, homeowners, automobile, motorcycle, life, health, group accident, fire and disability insurance. Complainant offers various insurance services under the NATIONWIDE Mark in all fifty states.

Complainant owns, among others, a federal registration covering NATIONWIDE for use in connection with insurance products and services. The NATIONWIDE registration is No. 854,888 registered August 13, 1968, for underwriting and sale of all lines of insurance, including fire, life and casualty.

Complainant’s services are offered only through its network of authorized agents and representatives. Complainant maintains strict control over the use of the NATIONWIDE Mark.

Since 1994, Complainant has owned and used the <nationwide.com> domain name. Customers can get insurance quotes, manage their retirement account, check mortgage rates and do numerous other activities through the website to which the domain name resolves.

In November 2005, Complainant became aware that the Respondent had registered <nationwideinsurancequote.com>. On November 11, 2005, Complainant made demand upon Respondent to transfer the disputed Domain Name. Additional follow-up letters were sent, but Respondent has never answered. The addresses provided by Respondent during registration of the disputed Domain Name are of Costco stores which have no knowledge of Henry Adams.

The website to which the disputed Domain Name resolves offers the advertising of competitors to Complainant.

 

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainant contends that it has several registrations including the phrase “Nationwide”, including Registration No. 854,888, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the NATIONWIDE Mark. 15 U.S.C. § 1115. Complainant further alleges that its Registration No. 854,888 is incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

(ii) Complainant argues that the Domain Name is confusingly similar to the NATIONWIDE Mark, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the NATIONWIDE Mark with the addition of the descriptive term “insurance quote”.

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use NATIONWIDE Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

Complainant alleges that Henry Adams is a fictitious name used merely to cybersquat and is not a real person. Therefore, no offering of goods or services by Respondent can be legitimately established rights or interest in the Domain Name.

(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant alleges that Respondent is receiving “click through” fees for each of the Internet users which is directed to a competitor of Complainant through the disputed Domain Name. Therefore, Complainant alleges that Respondent is engaged in commercial activity.

The actions of the Respondent after it was notified of the Complainant’s claims provide further evidence of Respondent’s bad faith. The Respondent did not contact the Complainant or otherwise respond to any of the communications from the Complainant.

Complainant alleges that, pursuant to Paragraph 4(b)(iv), Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b)(iv) provides that: by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

B. Respondent’s contentions

Respondent has filed no response and therefore has not contested any of the allegations of Complainant.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Because both Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States of America. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772.

A. Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

B. Enforceable Trademark Rights

Complainant contends that it has several registrations including the phrase “Nationwide”, including Registration No. 854,888, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the NATIONWIDE Mark. 15 U.S.C. § 1115. Complainant further alleges that its Registration No. 854,888 incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is the Panel's belief that Respondent has not met its burden.

Therefore, the Panel finds that Complainant has enforceable rights in the NATIONWIDE Mark for purposes of this proceeding.

C. Identical or Confusingly Similar

As numerous courts and prior WIPO UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark.

Generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).

The Panel agrees that the entirety of the NATIONWIDE Mark is included in the Domain Name and that the phrase “insurance quote” is descriptive. Therefore, the Panel finds that the Domain Name is confusingly similar to the NATIONWIDE Mark pursuant to the Policy paragraph 4(a)(i).

D. Rights or Legitimate Interests

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Complainant has come forward with factual allegation supporting its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Name. The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy, paragraph 4(c).

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).

E. Registered and Used in Bad Faith

The actions of the Respondent after it was notified of the Complainant’s claims provide further evidence of Respondent’s bad faith. The Respondent did not contact the Complainant or otherwise respond to any of the communications from the Complainant.

Complainant alleges that, pursuant to paragraph 4(b)(iv) of the Policy, Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b)(iv) provides that: by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

Respondent has chosen not to contest any of Complainant’s allegations. The Panel finds that the evidence is sufficient to establish the necessary elements of bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Panel finds that Respondent registered and used the Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the Domain Name <nationwideinsurancequote.com> is confusingly similar to Complainant’s registered NATIONWIDE Mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <nationwideinsurancequote.com> be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: February 11, 2007