Generali Global Assistance, Inc. v. JH Kang
Claim Number: FA2207002004831
PARTIES
Complainant is Generali Global Assistance, Inc. (“Complainant”), represented by Gregory N. Brescia of Gordon Rees Scully Mansukhani LLP, California, USA. Respondent is JH Kang (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <generalitravelinsurance.co>, registered with Sav.Com Llc; Sav.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2022; the Forum received payment on July 19, 2022.
On July 19, 2022, Sav.Com Llc; Sav.com, LLC confirmed by e-mail to the Forum that the <generalitravelinsurance.co> domain name is registered with Sav.Com Llc; Sav.com, LLC and that Respondent is the current registrant of the name. Sav.Com Llc; Sav.com, LLC has verified that Respondent is bound by the Sav.Com Llc; Sav.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 July 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@generalitravelinsurance.co. Also on July 20, 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 August 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <generalitravelinsurance.co> domain name is confusingly similar to Complainant’s GENERALI TRAVEL INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <generalitravelinsurance.co> domain name.
3. Respondent registered and uses the <generalitravelinsurance.co> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Generali Global Assistance, Inc., is in the travel insurance business, and holds a registration for the GENERALI TRAVEL INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,675,885, registered February 12, 2019).
Respondent registered the <generalitravelinsurance.co> domain name on July 5, 2022, and uses it to displays links related to Complainant’s business, which redirect to malicious software.
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 Panel finds that Complainant has rights in the GENERALI TRAVEL INSURANCE mark based upon registration with the USPTO. 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.”).
Respondent’s <generalitravelinsurance.co> uses Complainant’s GENERALI TRAVEL INSURANCE trademark and merely removes the spaces and adds the country-code top-level domain name (“ccTLD”) “.co.” Adding a ccTLD does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”); see also Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). Therefore, the Panel finds that Respondent’s <generalitravelinsurance.co> domain name is identical to Complainant’s GENERALI TRAVEL INSURANCE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <generalitravelinsurance.co> domain name because Respondent is not commonly known by the domain name, and is not licensed or authorized to use Complainant’s GENERALI TRAVEL INSURANCE mark. The WHOIS information for the disputed domain name lists the registrant as “JH Kang.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has. No rights under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also 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).
Complainant contends Respondent does not use the <generalitravelinsurance.co> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use by displaying links to malicious software. Diverting internet users to websites that attempt to install malware is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a non-commercial or fair use under Policy ¶ 4(c)(iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. 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 name’s resolving website, which displays links including “Travel Guard Travel Insurance Plan”, “Generali Travel Insurance”, and “Travel Insurance,” which connect to malicious software. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent uses the <generalitravelinsurance.co> domain name to disrupt the business of Complainant. Disruption of a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii), even if disruption was not commercially competitive. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). The Panel finds that Respondent’s use of the disputed domain name to redirect users to malware disrupts Complainant’s business, demonstrating bad faith under Policy ¶ 4(b)(iii).
The Panel finds that Complainant has satisfied 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 <generalitravelinsurance.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 17, 2022
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