Country Mutual Insurance Company and Country Life Insurance Company v. Zhichao Yang
Claim Number: FA2112001976492
Complainant is Country Mutual Insurance Company and Country Life Insurance Company (“Complainant”), represented by Liz Brodzinski of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coutnryfinancial.com> and <countyrfinancial.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2021; the Forum received payment on December 9, 2021.
On December 13, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <coutnryfinancial.com> and <countyrfinancial.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. 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 December 20, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of January 10, 2022 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@coutnryfinancial.com, postmaster@countyrfinancial.com. Also on December 20, 2021, the Chinese and English 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 January 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
As noted above (see “Parties”), the Complainant are two companies, closely related to each other, and registered co-owners of the trademarks at issue. The Panel will collectively hereafter refer to both companies as “the Complainant”, unless not specifically mentioned separately.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
In this case, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through i) the Chinese language Complaint and Commencement Notification, ii) the disputed domain names contains a misspelling of the English words COUNTRY FINANCIAL, iii) the fact that the web sites connected to the disputed domain names are in English clearly indicates that the Respondent is familiar with English languages, iv) the disputed domain name contains the “.COM” gTLD, which is the largest top-level domain and is often used by international entities for international websites, and, v) absent a Response, and therefore determines that the remainder of the proceedings may be conducted in English.
A. Complainant
The Complainant provides various investment and financial planning services. Complainant has rights in the COUNTRY FINANCIAL trademark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 3,538,359, registered Nov. 25, 2008). Respondent’s <coutnryfinancial.com> and <countyrfinancial.com> domain names are identical or confusingly similar to Complainant’s trademark as they incorporate misspellings of the trademarks and add the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <coutnryfinancial.com> and <countyrfinancial.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its COUNTRY FINANCIAL trademark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead hosts parked, competing, pay-per-click links on the disputed domain names’ resolving websites.
Respondent registered and uses the <coutnryfinancial.com> and <countyrfinancial.com> domain names in bad faith. Respondent attracts internet users for commercial gain to the disputed domain names’ resolving websites by offering parked, competing, pay-per-click links. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the COUNTRY FINANCIAL trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademarks:
No. 2,856,259 COUNTRY (fig), registered June 22, 2004 for goods and services in Intl Classes 36 and 37;
No. 2,650,093 COUNTRY (word), registered November 12, 2002, for services in Intl Class 36;
No. 3,538,359 COUNTRY FINANCIAL (fig), registered November 25, 2008, for services in Intl Class 36;
No. 4,847,141 COUNTRY FINANCIAL (fig), registered November 3, 2015, for services in Intl Class 36;
No. 3,969,917 COUNTRY FINANCIAL (word), registered May 31, 2011, for services in Intl Class 36.
The disputed domain names <coutnryfinancial.com> and <countyrfinancial.com> were registered on November 10, 2021.
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”).
The Complainant claims rights in the COUNTRY FINANCIAL trademark through its registrations with the USPTO (e.g. Reg. 3,538,359, registered Nov. 25, 2008, and Reg. 3,969,917, registered May 31, 2011). Registration of a trademark with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶4(a)(i). see Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel find that Complainant has rights in the COUNTRY FINANCIAL trademark under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s <coutnryfinancial.com> and <countyrfinancial.com> domain names are identical or confusingly similar to Complainant’s COUNTRY FINANCIAL trademark. Under Policy ¶ 4(a)(i), incorporating a slightly misspelled version of a domain name along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the trademark it incorporates. See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”). The disputed domain names incorporate all the letters of the COUNTRY FINANCIAL trademark and move the letter “r” to a different part of the trademark, and add the “.com” gTLD. The Panel notes that these minor differences have no overall importance, and the Panel therefore find that Respondent’s domain names are at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Complainant argues that Respondent is not commonly known by the <coutnryfinancial.com> and <countyrfinancial.com> domain names, nor has Complainant authorized or licensed Respondent to use its COUNTRY FINANCIAL trademark in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name, while a lack of evidence affirming otherwise may affirm a complainant’s assertion that it never authorized or licensed respondent to use its trademark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Zhichao Yang”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its MORGAN STANLEY trademark in the disputed domain names. Therefore, the Panel find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s <coutnryfinancial.com> and <countyrfinancial.com> domain names are not use for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host competing pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides screenshots of the disputed domain names’ resolving websites, which feature no content but parked pay-per-click links to various retirement, financial, and other planning services. The Panel agrees with the Complainant’s conclusion, and find that Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent registered and uses the <coutnryfinancial.com> and <countyrfinancial.com> domain names in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click links may be considered evidence of bad faith disruption for commercial gain. See For Your Ease Only, Inc. v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”). The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which feature no content but parked, pay-per-click links for various financial and retirement services. Therefore, based on that, the Panel find that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent registered the <coutnryfinancial.com> and <countyrfinancial.com> domain names with bad faith actual knowledge of Complainant’s rights in the COUNTRY FINANCIAL trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a registered/well-known trademark into a disputed domain name, as well as its use of the disputed domain name’s resolving website. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). As noted above, the COUNTRY FINANCIAL trademarks - in the misspelled versions - are fully incorporated into the disputed domain names, which direct to parked, related to Complainant’s services and competing pay-per-click links. The Panel therefore find that Respondent registered the disputed domain names 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 <coutnryfinancial.com> and <countyrfinancial.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 20, 2022
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