Combined Insurance Company of America v. Zhichao Yang
Claim Number: FA1603001667637
Complainant is Combined Insurance Company of America (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <combindedinsurance.com>, <combinedinsuance.com>, and <combinedinsuranc.com>, registered with NameSilo, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2016; the Forum received payment on March 28, 2016.
On March 30, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <combindedinsurance.com>, <combinedinsuance.com>, and <combinedinsuranc.com>, domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2016 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@combindedinsurance.com, postmaster@combinedinsuance.com, and postmaster@combinedinsuranc.com. Also on April 4, 2016, 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 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an insurance provider that offers supplemental insurance products in North America, Europe, and the Asia Pacific region. Complainant’s rights in the COMBINED INSURANCE stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,435,758, registered May 27, 2008). Respondent’s domains <combindedinsurance.com>, <combinedinsuance.com>, and <combinedinsuranc.com> are confusingly similar to the COMBINED INSURANCE mark as the domains are mere misspellings of the fully incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain. Respondent has not shown that it has ever been commonly known by the domain names or acquired trademark rights in the domains. Further, Respondent’s use of the domains, to resolve to websites displaying pay-to-click advertisements, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s bad faith is evident from use of the domain to cause confusion between the offerings on Respondent’s domains and Complainant’s legitimate services for Respondent’s commercial gain via pay-per-click hyperlinks.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that the disputed domain names were created on January 22, 2016.
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 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 (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 claims to have rights in the COMBINED INSURANCE mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,435,758, registered May 27, 2008). Panels have consistently held, and this Panel holds, that registration of a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant next claims that Respondent’s domains <combindedinsurance.com>, <combinedinsuance.com>, and <combinedinsuranc.com> are confusingly similar to the COMBINED INSURANCE mark. The disputed domains differ from the COMBINED INSURANCE mark through removing the letter “e” in the domain <combinedinsuranc.com>, adding the letter “d” to create <combindedinsurance.com>, and removing the letter “r” in the domain <combinedinsuance.com>. Panels have concluded that such changes do not prevent a finding of confusing similarity. See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”). The Panel therefore concludes that Respondent’s domains are confusingly similar to the COMBINED INSURANCE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent has not demonstrated that it has been commonly known by the disputed domain names. WHOIS information indicates that Respondent registered the domains using the name, “Zhichao Yang,” which does not appear to resemble the disputed domain names. Panels have found that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of evidence to the contrary. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). This Panel finds that Respondent is not commonly known by the disputed domain names.
Complainant argues that Respondent’s domains resolve to websites displaying pay-to-click advertisements, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domains resolve to websites displaying various “related links” with links titles that include, “Short Term Health Insurance,” “Office Insurance,” and “Health Insurance Providers.” Panels have held that using a disputed domain to display links that compete with products and services offered by a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
Accordingly, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain names and that therefore, Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent’s bad faith is evident from use of the domain to cause confusion between the offerings on Respondent’s domains and Complainant’s legitimate services. Respondent uses these domains to redirect to websites that display “related links” with titles that are related to the insurance industry and insurance services. Presumably, Respondent receives financial gain from users who click on the links displayed on the websites resolving from the disputed domains. Panels have found bad faith where a respondent used confusingly similar domains to resolve to websites that offered goods or services in competition with goods or services offered by a complainant. See, e.g., G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002). The Panel finds that Respondent registered and is using the disputed domains in bad faith to confuse and attract internet users for commercial gain pursuant to Policy ¶ 4(b)(iv).
Thus, Policy ¶ 4(a)(iii) has also been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <combindedinsurance.com>, <combinedinsuance.com>, and <combinedinsuranc.com>, domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 12, 2016
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