American Fidelity Assurance Company v. lin yanxiao
Claim Number: FA2203001987270
Complainant is American Fidelity Assurance Company (“Complainant”), represented by Nicole Kinsley of Foley Hoag LLP, Massachusetts, USA. Respondent is lin yanxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <securedamericanfidelity.com> (the “disputed domain name”), registered with Dynadot, 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 March 7, 2022; the Forum received payment on March 7, 2022.
On March 8, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <securedamericanfidelity.com> disputed domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Dynadot, 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 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@securedamericanfidelity.com. Also on March 14, 2022, 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 April 11, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, headquartered in Oklahoma City, was founded in 1960, and throughout its existence has established a reputation for quality. Complainant offers its customers a variety of insurance and financial services and currently serves more than 1,000,000 customers in 49 states in the United States, as well as 23 countries worldwide.
Complainant contends that it has rights in the AMERICANFIDELITY.COM trademark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration No. 4,397,234, registered on September 3, 2013). Complainant also owns a large-family of AMERICAN FIDELITY-formative trademarks that cover goods and services, including insurance and financial services, among others. The aforementioned trademarks will hereinafter collectively be referred to as the “AMERICAN FIDELITY Mark”.
Complainant further claims that Respondent’s disputed domain name is confusingly similar to Complainant’s AMERICAN FIDELITY Mark, that Respondent lacks rights and legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
The disputed domain name is identical to a login portal that Complainant’s customers use as an integral part of Complainant’s services, requiring Complainant’s customers to input personal, confidential and sensitive information, and suggests that the disputed domain name could be used as a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the AMERICAN FIDELITY Mark based on its trademark registrations with the USPTO and other jurisdictions worldwide. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AMERICAN FIDELITY Mark, as it incorporates the AMERICAN FIDELITY Mark in its entirety, merely adding the descriptive term “secured” before the Mark and then followed by the generic Top-Level Domain (“gTLD”) “.com. The Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name 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 name is confusingly similar to the AMERICAN FIDELITY Mark as set forth below.
First, Complainant asserts rights in the AMERICANFIDELITY.COM trademark based on registration of the mark with the USPTO (e.g., United States Registration No. 4,397,234, registered on September 3, 2013). Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Here, Complainant has provided this Panel with copies of its USPTO registrations for the AMERICAN FIDELITY Mark. Therefore, the Panel finds that Complainant has rights in the AMERICAN FIDELITY Mark per Policy ¶ 4(a)(i).
Second, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s AMERICAN FIDELITY Mark. It contains Complainant’s entire mark except for the addition of the descriptive term “secured” that precedes “AMERICAN FIDELITY”, and is then followed by the gTLD “.com”. The addition of a descriptive term and a gTLD to a trademark is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that 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 name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its AMERICAN FIDELITY Mark in the disputed domain name. In addition, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, using the AMERICAN FIDELITY Mark in a domain name to divert traffic to Respondent’s own website displaying links that lead visitors to third-party websites offering insurance and commercial financing services is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the domain name. See Target Brands, FA1701001714218 (following decision of past panels to find that use of domain name was “not a bona fide offering of goods or services because Respondent, likely to garner pay-per-click fees, directs users to websites in direct competition with Complainants.”). The disputed domain name’s resolving website displays links to competitor insurance-related websites.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the fame of the AMERICAN FIDELITY Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the AMERICAN FIDELITY Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). Moreover, it strains credulity to believe that Respondent had not known of the Complainant or its AMERICAN FIDELITY Mark when registering the disputed domain name. Thus, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, Complainant submits that Respondent has been involved in previous UDRP proceedings as a cybersquatter. See e.g., State Farm Mutual Automobile Insurance Company v. lin yanxiao, FA2108001958888 (September 13, 2021). Such cases demonstrate that Respondent has engaged in a pattern of conduct designed to infringe the trademarks of others, indicative of bad faith. Evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, indicating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum February 3, 2010). Therefore, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Fourth, the Panel finds that Respondent used the disputed domain name to engage in phishing. Using a disputed domain name to phish for users’ personal information is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum August 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). The disputed domain name is identical to a login portal that Complainant’s customers use as an integral part of Complainant’s services, requiring Complainant’s customers to input personal, confidential and sensitive information, and thus suggests that the disputed domain name could have been used as a phishing scheme, also indicative of bad faith.
Finally, the Panel concludes that Respondent registered and is using the disputed domain name for bad faith disruption of the Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name’s resolving website to host parked, pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum August 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
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 <securedamericanfidelity.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 18, 2022
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