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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CNO Financial Group, Inc. v. Onoja Iyanu

Case No. D2021-0636

1. The Parties

The Complainant is CNO Financial Group, Inc., United States of America (“United States”), represented by Ice Miller LLP, United States.

The Respondent is Onoja Iyanu, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <cnohiringfc.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2021, 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 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 March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. The Center received two email communications from the Respondent on March 10, 2021, and additional email communications from him on March 15, 16, 17, 18, and 19, 2021. These are dealt with below. Pursuant to paragraph 6 of the Rules, on March 25, 2021, the Center informed the Parties that it would proceed with the panel appointment process.

The Center appointed Antony Gold as the sole panelist in this matter on March 31, 2021. 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 financial services company based in Indiana, United States. It was incorporated in 1979, commenced operations in 1982 and became a public company, Conseco, Inc., in 1985. In 2010, the Complainant was rebranded to CNO Financial Group, Inc. The Complainant now provides insurance services to over 4 million clients and, in 2019, its net income amounted to USD 409.4 million.

The Complainant is the owner of many service marks to protect its CNO and CNO FINANCIAL GROUP trading styles. These include, by way of example only:

- United States Service Mark, registration number 3,894,349 for CNO in class 36, registered on December 21, 2010;

- United States Trade Mark and Service Mark, registration number 3,932,012, for CNO FINANCIAL GROUP in classes, 16, 18, 21, 25, 28, 35, 36, and 41, registered on March 15, 2011.

In addition, the Complainant owns the domain name <cnoinc.com>, which resolves to a website promoting the Complainant’s services.

The disputed domain name was registered on January 28, 2021. It does not resolve to an active website. On March 10, 2021, following receipt by the Respondent of the Complaint and notification of the commencement of these proceedings, he sent two emails to the Center apologizing for having registered the disputed domain name and promising to transfer it to the Complainant when it was possible to do so. In one of the emails, the Respondent explained that; “I will now delete and close down anything related to The CNO financial group…alright”.

Between March 15 and March 19, the Respondent sent further emails to the Center repeating both his willingness to transfer the disputed domain name to the Complainant and his apologies for having registered it. The Complainant, however, did not agree to a suspension of the proceedings and hence this matter has proceeded for determination by the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. The disputed domain name includes the Complainant’s CNO service mark in full. Whilst it includes additional components, the letters “CNO” form its dominant element and are those which the public are likely to perceive as the source-indicating feature. The fact that the Respondent listed “CNO Financial Company” as the registrant organization when registering the disputed domain name serves to underscore and increase the confusing similarity between it and the Complainant’s service marks and business. Past panels have held that a domain name that consists merely of a complainant’s trade mark together with an additional term which that closely relates to, and also describes, the complainant’s business, is confusingly similar to the complainant’s trade marks.

The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that it has not attempted to make a legitimate use of it. The Respondent is not affiliated with the Complainant. Moreover, it has not given the Respondent permission to use its service marks in a domain name, nor has it licensed or authorized the Respondent to use its marks, nor to register any domain name incorporating them.

The Respondent is not commonly known by the disputed domain name and it provided false WhoIs information by claiming that the registrant organization was “CNO Financial Company”. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The fact that the disputed domain name does not resolve to an active website is an indicator that it was registered in order to facilitate illegal activity.

The Complainant has satisfied its burden under the second element. It is now for the Respondent to come forward with evidence refuting the Complainant’s assertions.

Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant and its CNO and CNO FINANCIAL GROUP service marks are well known. The Complainant has marketed and sold its goods using these service marks since 2006, that is well before the Respondent’s registration of the disputed domain name in 2021. The fact that the Respondent stated that the registrant’s organization for the disputed domain name was “CNO Financial Company” clearly points to its awareness of the Complainant. Moreover, use within the disputed domain name of the word “hiring” and letters “fc” (which is intended to be an abbreviation for “financial company”) provide clear and convincing evidence of the Respondent’s intent to capitalize fraudulently on the Complainant’s name and reputation and to give the impression that the disputed domain name is legitimate, when it is not.

The Respondent has registered the disputed domain name for illegitimate purposes. The Respondent’s efforts to masquerade as the Complainant evince an intention to commit fraud. If the Complainant had not taken action against such activity the Respondent may have been successful in exploiting the confusion created by the disputed domain name in order to carry out a fraudulent scheme. The Respondent ignored the Complainant’s attempts to resolve this dispute outside of these proceedings.

B. Respondent

The Respondent’s various emails which he sent to the Center between March 10-19, which have been summarized above and from which it is evident that the Respondent has not sought to challenge the Complainant’s assertions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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

The information provided by the Complainant in relation to its service mark registrations for CNO, including the mark in respect of which full details are provided above, establish its rights in this service mark.

For the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, the generic Top-Level Domain (“gTLD”), “.com” is disregarded as this is a technical requirement of registration.

The disputed domain name comprises the Complainant’s CNO service mark in full, coupled with the word “hiring” and the letters “fc”. These additional elements do not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “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.”

The disputed domain name includes the Complainant’s CNO mark in its entirety and the mark is clearly recognizable within it. The Panel accordingly finds that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.

The inactive status of the disputed domain name does not constitute use in connection with a bona fide offering of goods and services. There is no evidence that the Respondent has been commonly known by the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of it. In particular, where a domain name consists of a trade mark used in combination with additional terms, this would not generally be considered capable of amounting to fair use if the combination (as here) effectively impersonates or suggests sponsorship or endorsement by the trade mark owner. See, by way of example, The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited / Martin Clegg, WM Holdings, WIPO Case No. D2016-2290.

The Complainant has made a prima facie case under the second element and the burden of production shifts to the Respondent. As the Respondent has, in fact, acknowledged that he should not have registered the disputed domain name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The fact that the Respondent registered the disputed domain name because he was aware of the Complainant and its CNO mark and appreciated that Internet users were likely to assume that it was connected in some way with the Complainant is evident from the following. First, the additional components, namely the word “hiring” and the letters “fc” (which will be perceived by Internet users as an abbreviation for “finance company”) are clearly intended to suggest a connection with the Complainant and its CNO and CNO FINANCIAL GROUP service marks. Second, the registrant organization has been recorded by the Respondent in the WhoIs record as “CNO Financial Company”. Third, in his email to the Center dated March 10, 2021, referred to in the Factual Background supra, the Respondent has acknowledged that he had the Complainant in mind when registering the disputed domain name. Whilst the Respondent has now expressed regret for his registration of the disputed domain name, nonetheless it was clearly registered in order to take advantage in some way of the repute of the Complainant and its CNO brand. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.

The fact that the disputed domain name is not being used in any generally understood meaning of the term does not preclude a finding of bad faith use. Section 3.3 of the WIPO Overview 3.0 considers passive holding by a respondent and explains that “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.

Applying these criteria to the circumstances of this case, they are all fulfilled, namely; (i) the Complainant’s CNO mark is distinctive; (ii) whilst the Respondent has not ignored the Complaint, he has not attempted to suggest that he had an actual or contemplated good faith use for the disputed domain name; (iii) the Respondent misleadingly stated that the organisation which was the Administrative Contact for the WhoIs record was “CNO Financial Company”; (iv) it is implausible to conceive of any good faith use to which the disputed domain name might be put by the Respondent. See also, by way of example; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246. Accordingly, in the circumstances of this case, the inactive status of the disputed domain name comprises bad faith use under the doctrine of passive holding.

The Panel therefore finds that the disputed domain name was registered and 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 <cnohiringfc.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: April 13, 2021

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