DECISION
Mercury Insurance Services, LLC v. YangZhiChao
Claim Number: FA2102001933409
Complainant is Mercury Insurance Services, LLC (“Complainant”), represented by Jill M. Pietrini of Sheppard, Mullin, Richter, & Hampton, LLP, California, USA. Respondent is YangZhiChao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mercuryinsurnace.com>, registered with 22net, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2021; the Forum received payment on February 24, 2021.
On February 25, 2021, 22net, Inc. confirmed by e-mail to the Forum that the <mercuryinsurnace.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. 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 3, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 23, 2021, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@mercuryinsurnace.com. Also, on March 3, 2021, the Chinese language 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 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an independent agency writer of automobile and home insurance policies.
Complainant holds a registration for the MERCURY INSURANCE COMPANY mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,273,138, registered August 7, 2007, and renewed as of August 24, 2017.
Respondent registered the domain name <mercuryinsurnace.com> on November 9, 2013.
The domain name is confusingly similar to Complainant’s MERCURY INSURANCE COMPANY mark.
Respondent has not been commonly known by the domain name.
Respondent has no trademark rights in the MERCURY INSURANCE COMPANY mark.
Respondent is not affiliated with Complainant and has not been authorized by Complainant to register or use the disputed domain name in any manner.
Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name redirects Internet users to a website doing business in competition with that of Complainant, and from the operation of which Respondent acquires financial gain.
Respondent does not have any rights to or legitimate interests in the domain name.
The domain name is a typo-squatted version of the MERCURY INSURANCE COMPANY mark.
Respondent has a history of bad faith domain name registrations.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Required Language of the proCeeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits, among other things, that: (a) the <mercuryinsurnace.com> domain name wholly contains English words and characters; (b) the content of the website resolving from the domain name has been presented in English; (c) Respondent has been a party respondent in other UDRP proceedings conducted in English, citing Credit Karma Inc. v. Domain Admin, Information Privacy Protection Services Limited / yangzhichao, D2018-0029 (WIPO March 14, 2018); John Hancock; FIL Limited v. Yangzhichao/Domain Whois Protection Service, Whois Agent, D2014-1006 (WIPO July 31, 2014); Hartford Fire Insurance Company v. yangzhichao / Information Privacy Protection Services Limited, c/o Domain Admin, D2015-2193 (WIPO January 25, 2016); Pentair, Inc. v. yangzhichao/Domain Admin, Information Privacy Protection Services Limited, D2015-1120 (WIPO September 21, 2015); and (d) translating the documents required to prosecute this proceeding into Chinese would put Complainant to a substantial financial burden.
Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the MERCURY INSURANCE COMPANY service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for …[its mark]… demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <mercuryinsurnace.com> domain name is confusingly similar to Complainant’s MERCURY INSURANCE COMPANY service mark. The domain name incorporates the dominant terms of the mark, deleting only the generic term “company,” while transposing the letters “a” and “n” and adding the generic Top Level Domain (“gTLD”) “.com.”
See, for example, Ashley Furniture Industries, Inc. v. domain admin, FA 1626253 (Forum July 29, 2015), finding that:
Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, see VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum August 17, 2015) (finding that a UDRP respondent’s <vnymodels.com> domain name was confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i), where the domain name omitted the generic term “management” from the domain name but included the remaining dominant portion of the mark).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <mercuryinsurnace.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <mercuryinsurnace.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the MERCURY INSURANCE COMPANY mark in any manner. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “YangZhiChao,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use the <mercuryinsurnace.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather employs it to resolve to a website selling insurance online in competition with the business of Complainant, and from the operation of which Respondent acquires financial gain. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.
See, for example, Coryn Group, Inc. v. Media Insight, FA 198959 (Forum December 5, 2003) (finding that a respondent was not using challenged domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website offering services in competition with those offered by a UDRP complainant under its mark).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <mercuryinsurnace.com> domain name, which we have found to confusingly similar to Complainant’s MERCURY INSURANCE COMPANY service mark, is an attempt by Respondent to profit commercially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, AltaVista Co. v. Krotov, D2000-1091 (WIPO October 25, 2000) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites marketing services similar to those of a UDRP Complainant).
We are also convinced by the evidence that Respondent knew of Complainant and of its rights in the MERCURY INSURANCE COMPANY mark when it registered the contested domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018):
Respondent’s prior knowledge [of a UDRP complainant’s mark, and, therefore, its bad faith in registering a confusingly similar domain name] is evident … from Respondent’s use of its trademark[-]laden domain name to direct internet traffic to a website which is a direct competitor of Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <mercuryinsurnace.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 31, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page