The Wawanesa Mutual Insurance Co. v. Arockias Inc
Claim Number: FA1903001835602
Complainant is The Wawanesa Mutual Insurance Co. ("Complainant"), represented by James L. Bikoff of Smith, Gambrell & Russell, LLP, District of Columbia, USA. Respondent is Arockias Inc ("Respondent"), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wawanesa.xyz>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2019; the Forum received payment on March 25, 2019.
On March 26, 2019, GoDaddy.com, LLC confirmed by email to the Forum that the <wawanesa.xyz> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@wawanesa.xyz. Also on March 26, 2019, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Also on April 16, 2019, presumably in response to the Forum's transmittal of the Notification of Respondent Default, Respondent sent a brief email message to the Forum requesting clarification of Complainant's position.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading insurance provider that serves consumers in Canada and the United States. Complainant has used WAWANESA and related marks in connection with this business in Canada since 1896 and in the United States since 1996. Complainant owns various trademark registrations for these marks, including a U.S. registration for WAWANESA in the form of a standard character mark. Complainant asserts that its marks are well known to the public as a result of their longstanding use and promotion.
Respondent registered the dispute domain name <wawanesa.xyz> in January 2019. The domain name resolves to a web page that contains the following text, with no other substantive content: "1000's of users visit this website & you could make it yours, buy it now for only €12999 EUR . . . Own your wawanesa.xyz website now . . . Buy it before it's too late." Complainant states that it has never authorized Respondent to use its name or mark; that Respondent has no connection with the WAWANESA mark; and that Respondent is not commonly known thereby.
Complainant contends on the above grounds that the disputed domain name <wawanesa.xyz> is identical or confusingly similar to its WAWANESA mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. The following email communication was sent by Respondent after the deadline for a Response:
Hi,
We are working on the town's website wawanesa and not sure why will the insurance company wants to own this domain. No where in the website it is going to have the word insurance on it.
This sounds totally unfair to us.
Please clarify.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").
The disputed domain name <wawanesa.xyz> corresponds to Complainant's registered WAWANESA mark, with the ".xyz" top-level domain appended thereto. The addition of a top-level domain is normally irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Wawanesa Mutual Insurance Co. v. -- / Peter Folan / Merab Okruashvili, FA 1450884 (Forum Aug. 7, 2012) (finding <wawanesa.org> identical to WAWANESA); Kellogg North America Co. v. Private Registration, FA 1613347 (Forum June 2, 2015) (finding <kelloggs.xyz> identical to KELLOGG'S). The Panel therefore considers the disputed domain name to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole use is for a web page offering the domain name for sale. Such use does not give rise to rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. See, e.g., Morgan Stanley v. Super Privacy Service LTD c/o Dynadot, FA 1834199 (Forum Apr. 15, 2019); Wawanesa Mutual Insurance Co. v. FENGJIECHEN / Feng JIECHEN, FA 1673384 (Forum June 17, 2016).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. (The Panel declines to assign any weight or credibility to the vague and unsubstantiated statements contained in Respondent's email correspondence.) Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name."
Respondent registered a domain name corresponding to Complainant's well-known mark without authorization, and is using it to advertise the domain name itself for sale at a price far exceeding Respondent's out-of-pocket costs. Under the circumstances, the Panel considers it reasonable to infer that Respondent was at all relevant times aware of Complainant and its mark, and that Respondent registered the disputed domain name with the intent of exploiting its correspondence to Complainant's name and mark. See, e.g., Wawanesa Mutual Insurance Co. v. FENGJIECHEN / Feng JIECHEN, supra (inferring knowledge of WAWANESA mark under similar circumstances). The Panel concludes that the domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wawanesa.xyz> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 17, 2019
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