CNA Financial Corporation v. William Thomson / CNA Insurance
Claim Number: FA1401001541484
Complainant is CNA Financial Corporation (“Complainant”), represented by Matthew Ciesielski of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is William Thomson / CNA Insurance (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnachicago.com>, registered with 1&1 Internet AG.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2014; the National Arbitration Forum received payment on January 30, 2014.
On January 31, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <cnachicago.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 January 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2014 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@cnachicago.com. Also on January 31, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <cnachicago.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CNA mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a Chicago company that provides insurance, reinsurance, and underwriting services and has maintained an Internet presence at <cna.com> since 1997. In support of its mark, Complainant has shown evidence of ownership of the United States Patent and Trademark Office (“USPTO”) registration for the CNA mark (Reg. No. 802,010 registered Jan. 11, 1966).
The <cnachicago.com> domain name is confusingly similar to the CNA mark. The addition of the generic top-level domain (“gTLD”) “.com” and the geographic descriptor “Chicago” is not enough to distinguish the disputed domain name from the CNA mark. Respondent is not commonly known by the <cnachicago.com> domain name. No business relationship exists between Complainant and Respondent, and Respondent does not have permission to be using the CNA mark in any way. The WHOIS record for the <cnachicago.com> domain name lists “William Thomson / CNA Insurance.”
Respondent makes unauthorized use of the CNA mark via the <cnachicago.com> domain name by offering competing insurance services under the trade name “CNA Insurance.” The disputed domain name’s resolving website further states that Respondent is located at “222 S Wabash Ave” in Chicago, mere steps away from Complainant’s headquarters at 333 South Wabash Avenue in Chicago. Respondent’s registration and use of the <cnachicago.com> domain name were intended to disrupt Complainant’s business. Respondent’s use of “CNA Insurance” as a trade name and listing “222 S Wabash Ave” as its address in Chicago is meant to confuse consumers so as to lure traffic away from Complainant’s legitimate website to Respondent’s own competing website. Meanwhile, the inadequacies in Respondent’s insurance services reflect poorly on Complainant and are detrimental to Complainant’s business. Respondent intentionally attempted to create a likelihood of confusion with Complainant. Respondent offers competing insurance services via the disputed domain name, and any resulting sales allow Respondent to profit from improper association, thereby generating revenue through the misappropriation of Complainant’s goodwill.
Complainant was alerted to Respondent’s website and alleged offerings when a prominent corporate business was provided a certificate of insurance purportedly produced by Complainant. When this business called to verify the certificate’s authenticity, an investigation found the certificate to be fraudulent by tracking the e-mail address on the certificate back to Respondent.
At the time Respondent registered the <cnachicago.com> domain name, Respondent was aware of Complainant’s rights in the CNA mark. At the very least, Respondent had constructive knowledge given Complainant’s USPTO trademark registrations. However, Respondent registered the <cnachicago.com> domain name nearly 50 years after Complainant acquired rights in the CNA mark and is offering competing services, thus demonstrating actual knowledge. The <cnachicago.com> domain name was registered on December 30, 2013.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is a Chicago company that provides insurance, reinsurance, and underwriting services and has maintained an Internet presence at <cna.com> since 1997. In support of its mark, Complainant has shown evidence of Complainant’s ownership of the USPTO registration for the CNA mark (Reg. No. 802,010 registered Jan. 11, 1966). Accordingly, Complainant has demonstrated that it has rights in the CNA mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations).
The <cnachicago.com> domain name is confusingly similar to the CNA mark. The addition of the gTLD “.com” and the geographic descriptor “Chicago” is not enough to distinguish the disputed domain name from the CNA mark. For example, in Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), the panel found that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark. Accordingly, the Panel finds that Respondent’s <cnachicago.com> domain name is confusingly similar to Complainant’s CNA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Respondent is not commonly known by the <cnachicago.com> domain name. No evidence available to this Panel disputes this. No business relationship exists between Complainant and Respondent, and Respondent does not have permission to be using the CNA mark in any way. The WHOIS record for the <cnachicago.com> domain name lists “William Thomson / CNA Insurance.” The Panel notes that the trade name inclusion of “CNA Insurance” does, in fact, create some association between Complainant’s mark and Respondent’s business. However, the Panel further notes that panels have still found that a Respondent is not commonly known by a disputed domain name despite an inference from a WHOIS record suggesting otherwise where the other information on the record supports the complainant’s assertion. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Here, the Panel notes that Respondent did not submit a response in this dispute to defend its ownership of the disputed domain name. Therefore, the Panel finds that Respondent is indeed not commonly known by the <cnachicago.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent makes unauthorized use of the CNA mark via the <cnachicago.com> domain name by offering competing insurance services under the trade name “CNA Insurance.” The disputed domain name’s resolving website further states that Respondent is located at “222 S Wabash Ave” in Chicago, mere steps away from Complainant’s headquarters at 333 South Wabash Avenue in Chicago. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel stated, “The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Given this precedent, the Panel finds that Respondent’s use of the <cnachicago.com> domain name to operate a competing business is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s registration and use of the <cnachicago.com> domain name were intended to disrupt Complainant’s business. Respondent’s use of “CNA Insurance” as a trade name and listing “222 S Wabash Ave” as its address in Chicago is meant to confuse consumers so as to lure traffic away from Complainant’s legitimate website to Respondent’s own competing website. The operation of a business at a confusingly similar domain name which competes with the offerings of the complainant in the dispute is disruptive to that complainant’s business and expected consumer base. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Therefore, the Panel finds that Respondent’s registration and use of the <cnachicago.com> domain name are disruptive, and thus demonstrative of Respondent’s bad faith under Policy ¶ 4(b)(iii).
Respondent intentionally attempted to create a likelihood of confusion with Complainant. Respondent offers competing insurance services via the disputed domain name, and any resulting sales allow Respondent to profit from improper association, thereby generating revenue through the misappropriation of Complainant’s goodwill. The panel in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) found bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services to those offered by the complainant under its mark. Similarly, this Panel holds that Respondent’s registration and use of the <cnachicago.com> domain name were an attempt to create a likelihood of confusion with Complainant’s mark from which Respondent was then profiting. This is bad faith under Policy ¶ 4(b)(iv).
It appears clear that, at the time Respondent registered the <cnachicago.com> domain name, he was aware of Complainant’s rights in the CNA mark. At the very least, Respondent had constructive knowledge given Complainant’s USPTO trademark registrations. Respondent registered the <cnachicago.com> domain name nearly 50 years after Complainant acquired rights in the CNA mark and is offering competing services, thus demonstrating actual knowledge. The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <cnachicago.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cnachicago.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 28, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page