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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chubb INA Holdings Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Kim Kim, WEBBIT USA

Case No. D2020-1946

1. The Parties

The Complainant is Chubb INA Holdings Inc., United States of America (“United States”) (“Complainant”), represented by Fish & Richardson P.C., United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Kim Kim, WEBBIT USA, United States (jointly and severally referred to as “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <chubbinsuranc.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 Complainant on August 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 7, 2020 (hereinafter “the Complaint”).

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 Respondent of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 4, 2020.

The Center appointed M. Scott Donahey as the sole panelist in this matter on September 18, 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

Complainant is the successor to a long line of predecessors of interest, who began to use the CHUBB mark internationally in its insurance business as early as 1882. Today, Chubb is one of the world’s largest publicly traded property and casualty insurance companies. Complainant uses the CHUBB mark to provide insurance products in the United States and 53 other countries. Complainant has over 31,000 employees worldwide and has some 650 offices in countries around the globe. Complainant and its predecessors have used the CHUBB mark in commerce continually for more than 130 years in connection with the insurance products and services it provides.

Complainant registered the CHUBB mark (registration number 998, 842) with the United States Patent and Trademark Office (USPTO) on November 19, 1974 in connection with its insurance underwriting services. Complaint, Annex 4. Complainant is also the registrant of the domain names <chubb.com> and <chubbinsurance.com>, which were registered in September 7, 1995 and April 21, 1999, respectively. Complaint, Annex 5.

Respondent registered the disputed domain name on January 13, 2020. Complaint, Annex 1. Respondent does not make any active use of the disputed domain name, using it only to resolve to a webpage that displays a generic stock photo along with the words “Your Online Data Processing.” Complaint, Annex 7. Complainant can find no evidence that Respondent has ever used the disputed domain name to resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is confusingly similar to Respondent’s well-known trademark. Complainant states that Respondent is not commonly known by the disputed domain name, nor can Complainant find any evidence Respondent has used the disputed domain name in connection with any bona fide offering of goods or services or has otherwise made any legitimate fair use of the disputed domain name. Respondent is not commonly known by the domain name, nor has Respondent made any legitimate noncommercial or fair use of the disputed domain name. Respondent has submitted no evidence in any effort to show that Respondent is commonly known by the disputed domain name. The disputed domain name merely resolves to a holding page indicating that a website is coming. Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith, in that the disputed domain name consists of Complainant’s famous and long-used CHUBB trademark coupled with a misspelling of the word insurance, which is missing the final “e” in that word.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

“A Panel shall decide a complaint 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.”

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 rights or legitimate interests in respect of the domain name; and,

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

A. Identical or Confusingly Similar

The disputed domain name consists of Complainant’s well-known CHUBB trademark coupled with a misspelling of the word which describes Complainant’s business “insurance,” but omitting the final “e,” so that the disputed domain name in full reads <chubbinsuranc.com>. The addition of this misspelled word does not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Moreover, this is nearly identical to the domain name which Complainant registered on April 21, 1999, <chubbbinsurance.com>. Complaint, Annex 5. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known CHUBB trademark.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 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. WIPO Overview 3.0, section 2.1.

In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Respondent registered the disputed domain name incorporating Complainant’s well-known CHUBB trademark and a misspelling of the business in which Respondent has long been engaged, that of insurance, but omitting the final “e” in the word. Indeed, people that are trying to go to Complainant’s website to which Complainant’s domain name <chubbinsurance.com> resolves, but inadvertently omit the final “e” in insurance, will be taken to Respondent’s website, a holding page which merely indicates that a website is coming. Accordingly, the Panel finds that the disputed domain name has been registered and is 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 disputed domain name <chubbinsuranc.com> be transferred to Complainant.

M. Scott Donahey
Sole Panelist
Date: September 25, 2020

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