Wawanesa Mutual Insurance Co. v. FENGJIECHEN / Feng JIECHEN
Claim Number: FA1605001673384
Complainant is Wawanesa Mutual Insurance Co. (“Complainant”), represented by James L. Bikoff of Smith, Gambrell & Russell, LLP, District of Columbia, USA. Respondent is FENGJIECHEN / Feng JIECHEN (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wawanesa.net>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2016; the Forum received payment on May 4, 2016.
On May 6, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <wawanesa.net> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology 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 May 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@wawanesa.net. Also on May 9, 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 June 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Complainant underwrites full coverage automobile, homeowners, condominium and renters insurance under the WAWANESA mark. Complainant has registered the WAWANESA mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. 3,913,978, registered Feb. 1, 2011), demonstrating rights in the mark under Policy ¶ 4(a)(i). Respondent’s <wawanesa.net> domain name is confusingly similar or identical to the WAWANESA mark as it incorporates the mark entirely and merely adds the “.net” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <wawanesa.net> domain name. Respondent is not commonly known by the disputed domain name as Respondent and his organization bear no similarity in sound, meaning, or appearance to the WAWANESA marks or the disputed domain. Respondent uses the disputed domain to offer the domain for sale (see Compl., at Attached Annexes 7 and 8), which is neither a bona fide offering, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
3. Respondent registered and used the disputed domain in bad faith. While Respondent has listed the disputed domain for sale on its resolving page, Policy ¶ 4(b)(i) bad faith has been shown. Further, while the WAWANESA mark has garnered fame and notoriety, and while the disputed domain incorporates the mark entirely, actual and/or constructive knowledge can be imputed.
B. Respondent
1. Respondent did not submit a Response to the Complaint.
SUPPORTED LANGUAGE REQUEST
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
1. Respondent’s <wawanesa.net> domain name is confusingly similar to Complainant’s WAWANESA mark.
2. Respondent does not have any rights or legitimate interests in the <wawanesa.net> domain name.
3. Respondent registered or used the <wawanesa.net> 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 underwrites full coverage automobile, homeowners, condominium and renters insurance under the WAWANESA mark. Complainant purports it has registered the WAWANESA mark with the CIPO (Reg. No. 3,913,978, registered Feb. 1, 2011), and argues that its demonstration of a trademark registration is sufficient in establishing Policy ¶ 4(a)(i) rights in the WAWANESA mark. Panels have found, that a complainant’s valid CIPO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See State Farm Mutual Automobile Insurance Company v. VistaPrint Technologies c/o Vistaprint North American Services Corp., FA 1617798 (Forum June 3, 2015) (concluding that “Complainant’s valid registration of the STATEFARM.COM mark with the CIPO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Therefore, this Panel finds that Complainant has established policy ¶ 4(a)(i) rights in the WAWANESA mark.
Next, Complainant argues that Respondent’s <wawanesa.net> domain name is confusingly similar or identical to the WAWANESA mark as it incorporates the mark entirely and merely adds the “.net” gTLD. Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel agrees that Respondent’s <wawanesa.net> domain name is confusingly similar to the WAWANESA mark under Policy ¶ 4(a)(i).
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 (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 (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”.
Complainant argues that Respondent has no rights or legitimate interests in the <wawanesa.net> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. Further, Respondent is not commonly known by the disputed domain name as Respondent and his organization bear no similarity in sound, meaning, or appearance to the WAWANESA marks or the disputed domain name. The WHOIS information regarding the disputed domain name lists “FENGJIECHEN/ Feng JIECHEN” as registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <wawanesa.net> domain name. Rather, Complainant contends that Respondent uses the disputed domain name to offer the domain for sale. See Compl., at Attached Annexes 7 and 8. Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Therefore, this Panel agrees that Respondent’s <wawanesa.net> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent registered and used the disputed domain in bad faith. Complainant contends that Respondent has attempted to sell the disputed domain name. See Compl., at Attached Annexes 7 and 8. Panels have agreed where a Respondent has attempted to sell a disputed domain name, such use constitutes bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Therefore, this Panel agrees that Respondent’s <wawanesa.net> domain name falls within the purview of Policy ¶ 4(b)(i).
Complainant asserts that, due to the garnered fame and notoriety of the WAWANESA mark, Respondent must have had actual or constructive knowledge of Complainant's rights in the WAWANESA mark when Respondent registered the disputed domain name. Complainant further argues that the disputed domain name incorporates the mark entirely indicates that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <wawanesa.net> domain name in bad faith according to 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).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wawanesa.net> domain name be TRANSFERRED from Respondent to Complaint.
John J. Upchurch, Panelist
Dated: June 17, 2016
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