Church Mutual Insurance Company v. Paul Looney
Claim Number: FA1603001668317
Complainant is Church Mutual Insurance Company (“Complainant”), represented by Christopher P. Foley of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Virginia, United States. Respondent is Paul Looney (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <churchrnutual.com>, registered with Melbourne IT Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2016; the Forum received payment on March 31, 2016.
On April 6, 2016, Melbourne IT Ltd confirmed by e-mail to the Forum that the <churchrnutual.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@churchrnutual.com. Also on April 7, 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 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant uses the CHURCH MUTUAL mark in connection with its business providing low-cost insurance to churches. Complainant has registered the CHURCH MUTUAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 800,029, registered December 7, 1965; Reg. No. 1,151,227, registered April 14, 1981), which establishes rights in the mark. Respondent’s <churchrnutual.com> domain name is virtually identical to the CHURCH MUTUAL mark because it merely removes the spacing between “Church” and “Mutual,” replaces the letter “m” with the letters “r” and “n,” forming “rn,” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <churchrnutual.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <churchrnutual.com> domain name. Rather, Respondent has engaged in a fraudulent scheme in which it impersonates Complainant through use of an email sent using the disputed domain as an email suffix, requesting a wire transfer payment, and the disputed domain resolves to an inactive website.
Respondent is using the <churchrnutual.com> domain name in bad faith. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers. Second, Respondent provided false registration information when registering the disputed domain name. Third, Respondent engaged in typosquatting. Lastly, Respondent had actual knowledge of the CHURCH MUTUAL mark when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Church Mutual Insurance Company, uses the CHURCH MUTUAL mark in connection with its business providing low-cost insurance to churches. Complainant owns rights in the CHURCH MUTUAL mark through registration with the USPTO. (Reg. No. 800,029, registered December 7, 1965; Reg. No. 1,151,227, registered April 14, 1981). Respondent’s <churchrnutual.com> domain name is confusingly similar to the CHURCH MUTUAL mark.
Respondent registered the <churchrnutual.com> domain name on February 24, 2016. Respondent has no rights or legitimate interests in the <churchrnutual.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <churchrnutual.com> domain name. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers. Respondent used an email in an attempt to effectuate a wire transfer from one of Complainant’s employees, while impersonating Complainant’s CEO.
Respondent is using the <churchrnutual.com> 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 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 owns rights in the CHURCH MUTUAL mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <churchrnutual.com> domain name is confusingly similar to the CHURCH MUTUAL mark under Policy ¶ 4(a)(i), because it removes the spacing between “Church” and “Mutual”, replaces the letter “m” with “r” and “n,” and adds the gTLD “.com.”
Respondent has no rights or legitimate interests in the <churchrnutual.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent created the disputed domain name using a false identity to further his email fraud on Complainant and its customers. The WHOIS information lists “Paul Looney / Melbourne IT, LTD. D/B/A Internet Names Worldwide” as registrant of record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <churchrnutual.com> domain name. Rather, the domain name resolves to an inactive website. See Hewlett-Packard Co. v. Shemesh, FA 0503000434145 (Forum April 20, 2005) (“The Panel finds that the [inactive] holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent is using the disputed domain name to send emails that impersonate Complainant in order to defraud Complainant and Complainant’s customers. See Oracle International Corporation v. Joshua Perrymon/NUTINE, FA 1510001642463 (Forum November 25, 2015) (“Past panels have concluded that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to fraudulently acquire the personal and financial information of a complainant’s customers); see also Chevron Intellectual Property LLC v. Phillip Thomas/Chevron Pacific, FA 1504001615524 (Forum May 29, 2015) (where among other things, the respondent registered the domain name <chevronpacificep.com> under the false name “Chevron Pacific” the panel found “Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name”).
Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers or to otherwise perpetuate fraud. A respondent engages in bad faith use and registration under Policy ¶ 4(a)(iii) where the respondent uses a disputed domain name and associated e-mail in furtherance of fraud or illegal activity. See National Oilwell Varco, L.P. v. Craig Wood/ NOV, FA 1575951 (Forum Sept. 22, 2014) (“We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name”).
Respondent provided false registration information when registering the domain name which shows bad faith use and registration under Policy ¶ 4(a)(iii). See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. Vijay S. Kumar/Strategic Outsourcing Services Pvt. Ltd., FA 1411001647718 (Forum Jan. 4, 2016) (“False or misleading contact information indicates bad faith registration and use”).
Respondent engaged in typosquatting by using a confusingly similar misspelling of Complainant’s CHURCH MUTUAL mark. This is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See, e.g., Phillips 66 Company v. Tim Taylor, FA 1602001659658 (Forum March 3, 2016) (“Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”).
Due to: (1) Complainant’s federal registrations (2) fame of the CHURCH MUTUAL mark (3) Complainant’s use of the mark (4) the domain name being confusingly similar to the CHURCH MUTUAL mark, and (5) Respondent impersonating Complainant through the disputed domain name, Respondent had actual knowledge of Complainant's rights in the mark when Respondent registered the disputed domain name. Therefore, Respondent registered the <churchrnutual.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (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).").
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 <churchrnutual.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 17, 2016
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