The Wawanesa Mutual Insurance Co. v. Li Hou Chang
Claim Number: FA2001001881099
Complainant is The Wawanesa Mutual Insurance Co. (“Complainant”), represented by James L. Bikoff of SMITH, GAMBRELL & RUSSELL, LLP, United States. Respondent is Li Hou Chang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wawaesa.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2020; the Forum received payment on January 29, 2020. The Complaint was submitted in both Chinese and English.
On February 5, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <wawaesa.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 February 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wawaesa.com. Also on February 7, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
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, The Wawanesa Mutual Insurance Co., operates in the business of automobile, homeowners, condominium, and renters insurance. Complainant has rights in the trademark WAWANESA based on its use in commerce since 1896 and its registration with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”) dating back to 2011. Respondent’s <wawaesa.com> domain name, registered on January 16, 2017, is nearly identical to Complainant’s mark but for the omission of a single letter “n” and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <wawaesa.com> domain name. Respondent is not licensed or authorized to use Complainant’s WAWANESA mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to display pay-per-click links to competing third-party websites.
Respondent registered and uses the <wawaesa.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users for commercial gain. Additionally, Respondent’s domain name registration constitutes typosquatting. Further, Respondent had both actual and constructive knowledge of Complainant’s rights in the WAWANESA mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 Jurisprudential Overview 3.0 at ¶ 4.3; 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”).
Preliminary Matter: Language of the Proceedings
The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and have English be the language of the proceedings. In favor of its request, Complainant notes that the disputed domain name is comprised of Latin characters and does not carry any specific meaning in the Chinese language, the disputed website contains advertisements in English, and requiring that Complainant submit documents in Chinese would cause undue delay and substantial further expense. The Panel notes that the Forum has provided notice of this case sent other procedural documents to the Respondent in both Chinese and English, yet the Respondent has not provided a Response or made any other submission in this case. In light of the above-mentioned circumstances, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.
Complainant claims rights in the WAWANESA mark based on registration with the USPTO and the CIPO. Registration of a mark with a governmental trademark agency is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Snap Inc. v. Nabil EL, FA 1882878 (Forum Feb. 22, 2020) ("It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.”) Complainant submits into evidence images of certain trademark registrations of the WAWANESA mark with the USPTO and the CIPO. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <wawaesa.com> domain name is confusingly similar to Complainant’s mark because it simply omits a single letter from the mark and adds a gTLD. Misspellings caused by omission of a letter do not distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Further, addition of a gTLD is irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Complainant contends that the omission of the letter “n” from the mark does not change the look, sound, or meaning of the mark and therefore the domain name is confusingly similar to the WAWANESA mark. The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <wawaesa.com> domain name because Respondent is not licensed or authorized to use Complainant’s WAWANESA mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record for the <wawaesa.com> domain name lists “Li Hou Chang” as the registrant and no information suggests that it is known otherwise or that Complainant has authorized Respondent to use the WAWANESA mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Respondent doesn’t use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead uses the domain to display pay-per-click links to competing third-party websites. Use of a confusingly similar domain name to host parked hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage and the pay-per-click links presented on the page. If Respondent does have a legitimate purpose for the <wawaesa.com> domain name, it has not made it known in these proceedings. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent had both constructive and actual knowledge of Complainant’s rights in the WAWANESA mark. While constructive notice of a complainant’s rights in a mark is typically insufficient to show bad faith, actual notice can be evidence of bad faith registration and use. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant claims that the similarity between Respondent’s domain name and the WAWANESA mark in conjunction with the content of its website (i.e,. links to Complainant and its competitors) evidences actual knowledge of Complainant’s rights in the mark. The Panel finds that Complainant has made a prima facie case that Respondent had actual knowledge of the WAWANESA mark and this has not been rebutted by Respondent.
Next, Complainant argues that Respondent registered and uses the <wawaesa.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users for commercial gain by passing itself off as Complainant. Use of a disputed domain name to display pay-per-click hyperlinks relating to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain by passing off under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that displayed links to third-party websites which offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel notes that Complainant provides screenshots of Respondent’s website and there is some similarity between the displayed links and Complainant’s field of business. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant claims that Respondent’s domain name registration constitutes typosquatting. Typosquatting may act as independent evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant argues that Respondent’s misspelling of the WAWANESA mark for use in the <wawaesa.com> domain name constitutes typosquatting. The Panel agrees and finds this provides additional evidence that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wawaesa.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 3, 2020
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