Country Mutual Insurance Company and Country Life Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2112001976494
Complainant is Country Mutual Insurance Company and Country Life Insurance Company (“Complainant”), represented by Liz Brodzinski of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cuontryfinancial.com> and <ciuntryfinancial.com> (the “disputed domain names”), registered with GoDaddy.com, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2021; the Forum received payment on December 8, 2021.
On December 10, 2021, the Registrar confirmed by e-mail to the Forum that the <cuontryfinancial.com> and <ciuntryfinancial.com> disputed domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 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@cuontryfinancial.com, postmaster@ciuntryfinancial.com. Also on December 16, 2021, 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 January 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. See Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) (holding that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity); see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (holding that the two complainants were deemed a single entity where both parties held rights in trademarks contained within the disputed domain names).
That is precisely the case here. There are two Complainants in this matter: Country Mutual Insurance Company and Country Life Insurance Company. Complainants argue they have standing to bring forth the current proceeding since they are co-owners of the trademarks at issue in this proceeding, including the COUNTRY and COUNTRY FINANCIAL trademarks at issue, and are in privity with one another. Therefore, the Panel finds that Country Mutual Insurance Company and Country Life Insurance Company are both proper Complainants in this proceeding.
Accordingly, in this Decision, the Complainants will be collectively referred to as the “Complainant.”
A. Complainant
Complainant is a group of financial services companies that has been providing insurance and related services since 1925. Complainant’s offerings have since grown to include many types of insurance, estate planning, investment management, and annuities services to nearly one million households and businesses in 19 states. Complainant has approximately 3,000 employees and 2,000 financial representatives
Complainant asserts rights in the COUNTRY trademarks through its registration of various trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g., COUNTRY, Reg. No. 2,650,093, registered on November 12, 2002, and COUNTRY FINANCIAL, Reg. No. 3,969,917, registered on May 31, 2011 (hereinafter collectively referred to as the “COUNTRY and COUNTRY FINANCIAL Marks”). The Complainant contends that Respondent’s <cuontryfinancial.com> and <ciuntryfinancial.com> disputed domain names are identical or confusingly similar to Complainant’s COUNTRY and COUNTRY FINANCIAL Marks, as they are misspelled versions of the marks with the addition of the “.com” generic top-level domain (“gTLD”). The Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and is using the <cuontryfinancial.com> and <ciuntryfinancial.com> disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds valid trademark rights in the COUNTRY and COUNTRY FINANCIAL Marks. The Panel holds that the disputed domain names are confusingly similar to Complainant’s COUNTRY and COUNTRY FINANCIAL Marks, that Respondent lacks rights or legitimate interests in the use of the disputed domain names, and that Respondent registered and is using the disputed domain names 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain names are confusingly similar to the COUNTRY and COUNTRY FINANCIAL Marks as set forth below.
The Panel finds that Complainant has rights in the COUNTRY and COUNTRY FINANCIAL Marks based on their registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Here, the disputed domain names consist of a misspelling[i] of the COUNTRY and COUNTRY FINANCIAL Marks, switching the letters “o” and “u” in “country” in <cuontryfinancial.com> and replacing the letter “o” with “i” in “country” in <ciuntryfinancial.com>, in each case followed by the gTLD “.com“. Registration of a domain name that switches the order of two letters in the trademark does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (changing a single letter is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent misspells Complainant’s COUNTRY and COUNTRY FINANACIAL Marks by switching the letters “o” and “u” in the term “country” and changing the letter “o” to “i” to create the term “cuountry” and “ciuntry” in the disputed domain names, respectively. Therefore, the Panel concludes that the disputed domain names are confusingly similar to the COUNTRY and COUNTRY FINANCIAL Marks.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See 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”). As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
In support, the Panel finds that Respondent is not commonly known by the disputed domain names or any name similar to them, nor has Complainant authorized or licensed Respondent to use its COUNTRY and COUNTRY FINANCIAL Marks in the disputed domain names. Furthermore, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because here, Respondent is using the disputed domain names to resolve to a landing page that contains malware. This type of illegal use of domain names is not a legitimate interest. See Morgan Stanley v. Foo, FA 1607001682650 (Aug. 11, 2016) (finding that use of <morgastanley.com> to redirect users to a website that attempts to install malware was not a legitimate interest). Using the disputed domain names 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain names in bad faith.
First, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s resolving landing page by creating a likelihood of confusion with Complainant's COUNTRY and COUNTRY FINANCIAL Marks as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Second, the Panel finds that Respondent was using the disputed domain names in bad faith as Respondent was distributing malware on the disputed domain names’ resolving landing pages. Registering a disputed domain name to divert Internet users to a resolving webpage that hosts and distributes malware is evidence of bad faith under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that a disputed domain name which resolves to a landing page that distributes malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Third, Respondent has engaged in typosquatting, which, in and of itself, is evidence of bad faith. See Morgan Stanley v. Hom, FA 200100187796 (Forum Feb. 9, 2020) (registration and use of <morganstlanley.com> was a misspelling of MORGAN STANLEY mark and thus constituted typosquatting and evidence of bad faith); Hilton Int’l Holding LLC v. Tamm, FA1809001809730 (Forum Nov. 5, 2018) (registration and use of <hitlon.com> was a misspelling of the HILTON trademark and thus constituted typosquatting and evidence of bad faith).
Finally, the Panel finds that Respondent engaged in a pattern of bad faith registration and use by engaging in a pattern of cybersquatting. Per Policy ¶ 4(b)(ii), evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, demonstrating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010). Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of the disputed domain names containing the trademarks of the complainants). Here, Respondent has registered and is using disputed domain names containing third-party trademarks; such conduct is indicative of bad faith registration and use.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cuontryfinancial.com> and <ciuntryfinancial.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Dated: January 13, 2022
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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