Country Mutual Insurance Company and Country Life Insurance Company v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2203001987647
Complainant is Country Mutual Insurance Company and Country Life Insurance Company (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, Michigan, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycountryfinancia.com>, registered with Media Elite Holdings Limited.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2022; the Forum received payment on March 10, 2022.
On March 13, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <mycountryfinancia.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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@mycountryfinancia.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.
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.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Country Mutual Insurance Company and Country Life Insurance Company. Complainants argue that they have standing to bring the current proceeding because (1) they are co-owners of the trademarks at issue in this proceeding, and (2) are in privity with one another.
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. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119, (Forum May 12, 2006), the panel stated:
It has been accepted 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.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant”.
A. Complainant
Complainant is a financial services company. Complainant has rights in the COUNTRY FINANCIAL mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 3,969,917, registered May 31, 2011). Respondent’s <mycountryfinancia.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark, adds the word “my” to the front and the “.com” gTLD to the back, and removes the letter “l”.
Respondent lacks rights and legitimate interests in the <mycountryfinancia.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its COUNTRY FINANCIAL mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers malicious software on the domain name’s resolving website.
Respondent registered and uses the <mycountryfinancia.com> domain name in bad faith. Respondent has exhibited a pattern of bad faith registration and use. Respondent attracts internet users for commercial gain to the disputed domain name’s resolving website, where Respondent attempts to load malicious software onto internet user computers and likely phishes for user information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <mycountryfinancia.com> domain name.
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”).
Complainant claims rights in the COUNTRY FINANCIAL mark through its registrations with the USPTO (e.g. Reg. 3,969,917, registered May 31, 2011). Registration with the USPTO is sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Phusion Projects, LLC vs. Ferg / Ferg Ferg, FA 1912001874943 (Forum Jan. 8, 2020) (“Complainant’s USPTO registration of its FOUR LOKO mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mycountryfinancia.com> domain name is identical or confusingly similar to the COUNTRY FINANCIAL mark as it incorporates the mark, removes the “l”, and adds the word “my” and the “.com” gTLD. Adding the word “my” and a gTLD to a misspelled version of a mark does not prevent a finding that a disputed domain name is identical or confusingly similar to the mark it incorporates under Policy ¶ 4(a)(i). See BBY Solutions, Inc. v. Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <mycountryfinancia.com> domain name, nor has Complainant authorized or licensed Respondent to use its COUNTRY FINANCIAL mark in its domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information, or lack thereof when hidden behind a privacy service, is generally sufficient in demonstrating that a Respondent is not commonly known by a disputed domain, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS of record identifies Respondent as a privacy service, and no evidence on the record rebuts Complainant’s claim that it never authorized or licensed Respondent to use its COUNTRY FINANCIAL mark in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <mycountryfinancia.com> domain name 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 malicious software is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which redirects to a page with no content but a pop-up that advises the user to click it. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Patterns of bad faith may be established through a number of adverse UDRP decisions levied against a Respondent under Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains. “Of this list, 67 use the same email, support@domainp.net, as the Complainant.” A search at the Forum, http://www.adrforum.com/SearchDecisions, for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer (one was denied and one was withdrawn). Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(ii)”). Complainant has provided information that Respondent has been a respondent in at least 92 Forum and 127 WIPO UDRP cases and has been found to have used disputed domain names for malicious reasons and has a long patter of domain abuse. This bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent attracts internet users for commercial gain to the <mycountryfinancia.com> domain name’s resolving website and may attempt to download malware.Hosting malware and/or attempting to phish for user information on a disputed domain name’s resolving website may demonstrate this sort of bad faith registration and use under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Complainant has provided screenshots of the disputed domain name’s resolving website, which redirects to a page with no content but a pop-up that advises the user to click it. Complainant further provides evidence that Respondent has set up an MX function to enable it to send emails from the disputed domain name, further indicating that it will likely phish with it. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant has proved this element.
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 <mycountryfinancia.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
April 14, 2022
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