The Wawanesa Mutual Insurance Company v. Above.com Legal
Claim Number: FA1605001675466
Complainant is The Wawanesa Mutual Insurance Company (“Complainant”), represented by James L. Bikoff of Smith, Gambrell & Russell, LLP, District of Columbia, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wawanesa.us>, registered with Above.com Pty Ltd..
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2016; the Forum received payment on May 17, 2016.
On May 20, 2016, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <wawanesa.us> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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.us. Also on May 23, 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 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 is an insurance company based in Manitoba, Canada that offers its services in both Canada and the United States. In connection with this business Complainant has been using the WAWANESA mark in Canada since 1896 and in the United States since 1996. Complainant’s rights in the WAWANESA marks stems from registrations with the Canadian Intellectual Property Office (“CIPO”) and United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,913,978, registered Feb. 1, 2011). Respondent’s domain <wawanesa.us> is confusingly similar to the WAWANESA mark as the domain uses the WAWANESA mark in full and only adds the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the WAWANESA mark, been commonly known by the WAWANESA name, or otherwise provided any evidence to indicate that it had rights in the WAWANESA mark. Further, Respondent is not making a bona fide use of the disputed domain as the domain redirects users to various websites such as a Yahoo! search result page for the phrase, “car insurance quote,” and another website that locks a user’s computer until the user calls a provided number and pays to regain access. See Compl., at Attached Annex 9.
Respondent has registered or is using the disputed domain name in bad faith. Respondent’s bad faith is evident from Respondent’s pattern of registering domains in bad faith. Additionally, Respondent’s domain disrupts Complainant’s business by redirecting users to websites of competitors. Finally, Respondent had actual knowledge of Complainant’s rights in the WAWANESA mark at the time of registration based on the incorporation of the entire WAWANESA mark in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was created June 4, 2007.
C. Supplemental submissions
In response to an order from the Panel, the Complainant submitted multiple pages of evidence attempting to establish that it had secondary meaning in WAWANESA prior to Respondent’s registration of the disputed domain name.
The Panel finds that the disputed domain name and Complainant’s common law trademark, WAWANESA, are confusingly similar, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
The Complainant alleges rights in the mark WANAESA. In the Complainant’s initial complaint, it seems to base those rights on a trademark registration that occurred in 2011 in the United States. (Reg. No. 3,913,978, registered Feb. 1, 2011). However, the disputed domain name was registered in June of 2007 or well before the trademark registration was issued.
Therefore, in order to prevail, the Complainant must show that it had rights in or to the mark WANANESA prior to June of 2007. To do that, Complainant must show it had secondary meaning that predated the registration of the disputed domain name. To establish secondary meaning, the Complainant must have evidence of continued use, consumer recognition, unsolicited media coverage or other evidence that show the mark identifies the Complainant as the source or origin of the good or service. As such evidence was lacking from the complaint, instead of dismissing the complaint, the Panel ordered the Complainant to produce evidence of such secondary meaning that existed prior to June of 2007.
In response, the Complainant attached documents and a summary of its apparent claim to secondary meaning. Its summary stated as follows:
Further to the Panel Order dated June 23, 2016, Complainant puts forth the following information supporting its claim that the mark WAWANESA achieved secondary meaning prior to the registration of the WAWANESA.US domain name:
• The name and mark WAWANESA has been used in commerce since 1896. More information about the history of Complainant, taken from the website http://www.wawanesa.com/us/california/about-us/about-our-company/company-history.html?language_id=1, is attached as “History of Wawanesa.pdf.”
• The name and mark WAWANESA is derived from the name of the Manitoba village in which the company is founded. See pg. 7 of “History of Wawanesa.pdf.” The village no longer exists, and now consumers associate the term exclusively with Complainant. Attached is a copy of the Wikipedia page for “Wawanesa, Manitoba” (which references our client). See “Wawanesa, Manitoba Wikipedia Entry.pdf.” The name “Wawanesa” no longer appears in the dictionary as a generic location term. See “Wawanesa Dictionary.com Search.pdf”
• The first five pages of Google search results for “Wawanesa” all refer to Complainant, demonstrating that when consumers are looking for “Wawanesa” they are seeking out Complainant. See “Google Search Wawanesa.pdf.”
• Complainant widely advertises its insurance services using the WAWANESA mark. See attached screenshots from Complainant’s YouTube page with WAWANESA commercials, https://www.youtube.com/channel/UCHyXdQ-qMjx7K2Vq6AqOkeg (“Wawanesa Insurance – YouTube.pdf”) and an example of Complainant’s billboard advertisements (“Wawanesa Billboard.jpg”).
• Complainant was granted a registration for the mark WAWANESA in the United States on February 1, 2011, based on use in commerce since 1896, and use in U.S. commerce in February 1996. When evaluating the trademark, the U.S. Patent and Trademark Office (USPTO) found that the mark was distinctive, which meant Complainant was not required to submit proof of secondary meaning. A screenshot from the USPTO website showing that there were no refusals of the application for WAWANESA, such as a requirement to demonstrate secondary meaning, is attached (“WAWANESA U.S. Registration History.pdf”).
• Further, the USPTO has acknowledged that the mark has achieved incontestable status (by its acceptance of Complainant’s declaration filed pursuant to Lanham Act § 15), which means that the mark cannot be challenged on the basis that the mark lacks secondary meaning. See “Notice of Acknowledgement of Incontestability.pdf.”
The only document that is relevant to the question of secondary meaning prior to June of 2007 is the History of WAWANESA. This submission clearly establishes the secondary meaning the Panel must have to base trademark rights on something other than a trademark registration.
In addition, in various places in the initial Complaint, Complainant makes the following representations that might be construed into establishing a claim of secondary meaning:
• “As a result of its use and promotion of its WAWANESA Marks for over a century, the WAWANESA Marks are well known to the public as service marks that identify Complainant as the source and origin of insurance services.”
• “First, Complainant has used the mark WAWANESA since 1896. Respondent did not acquire the <wawanesa.us> domain name until June 4, 2007, over 110 years after Complainant started using its distinctive name and mark WAWANESA in commerce.”
• “As established above, Complainant has continuously used the name and mark WAWANESA for over 115 years in connection with insurance services.”
• “In this case, Respondent’s constructive knowledge of Complainant’s superior rights in the WAWANESA Marks is evidenced by Complainant’s use of the WAWANESA Marks for over 115 years in Canada and the United States.”
As the Respondent failed to file a response in this case, the Panel accepts as true all reasonable allegations of the Complainant. The Panel finds, representation in the complaint along with the document titles History of WAWANESA, that the Complainant’s mark had secondary meaning prior to June of 2007, even though Complainant does not make a clear assertion to this claim in its complaint.
As such, the Panel finds that the Complainant has rights in or to the trademark WAWANES to support this complaint. The Panel further finds that the disputed domain name is confusingly similar to Complainant’s common law trademark, WAWANESA. The disputed domain name <wawanesa.us> is derived by merely adding the ccTLD “.us” to the mark itself. This is not adequate to distinguish the disputed domain name from the Complainant’s mark.
Accordingly, the Panel finds that Respondent’s <wawanesa.us> domain is confusingly similar to the WAWANESA mark for purposes of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent apparently has no authority or license to register the disputed domain name. The Respondent is apparently not commonly known by the disputed domain name. WHOIS information associated with the domain identifies Respondent as, “Above.com Legal,” which does not appear to resemble the disputed domain. Correspondence between Complainant and a representative of “Above.com,” the representative claims that it is not the owner of the disputed domain. See Compl., at Attached Annex 9.
Regardless, the Panel finds that absent contrary evidence the Respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(iii).
Complainant contends that Respondent has not provided any evidence that it has rights in a mark identical to the disputed domain name under Policy ¶ 4(c)(i). As Respondent has not submitted a Response in this matter the Panel finds, as previous panels have held, that failing to submit a response or otherwise submit evidence of ownership in a mark identical to a domain allows for a finding that Respondent owns no rights in such a mark. See HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited v. PHMC GPE, FA 1658722 (FORUM Mar. 14, 2016) (finding that Respondent was not the owner or beneficiary of a trade or service mark identical to the disputed domain name under Policy ¶ 4(c)(i), even when Complainant did not argue this point).
Complainant also argues that Respondent is not making a bona fide use of the disputed domain. Complainant claims that Respondent’s domain resolves to different third party websites as a Yahoo! search result page for the phrase, “car insurance quote,” and another website that locks a user’s computer until the user calls a provided number and pays to regain access. Complainant appears to show the latter use through a splash page warning the user to not proceed to the resolving website because it contains malware. Annex submitted in this proceeding shows the search phrase as, “car insurance reviews.” See Compl., at Attached Annex 10. Panels have found that using a domain comprised of another’s mark for the purposes of directing users to competing websites or websites hosting malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (FORUM Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Ceridian Corp. v. Versata Software, Inc., FA 1259927 (FORUM June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Accordingly, this Panel finds that Respondent’s use does not fall within the permitted uses of Policy ¶ 4(c)(ii) or ¶ 4(c)(iv). As such, the Panel finds that the Respondent lacks any rights or legitimate interests in or to the disputed domain name.
Bad Faith Use and Registration
Complainant claims that Respondent’s bad faith is evident from Respondent’s pattern of registering domains in bad faith. Again, while WHOIS information identifies Respondent as, “Above.com Legal,” an <above.com> representative claimed to not be the owner of the disputed domain. See Compl., at Attached Annex 1 & 9. Respondent has been a party to multiple adverse UDRP decisions, including those where panels have found bad faith under Policy ¶ 4(b)(ii). See Health Republic Ins. Co. v. Above.com Legal, FA 1622088 (FORUM July 10, 2015); LifeLock v. Above.com Legal, FA 1577364 (FORUM Oct. 9, 2014). Panels have found bad faith where a respondent has been a party to multiple UDRP decisions finding bad faith. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (FORUM Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
The Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent’s domain disrupts Complainant’s business by redirecting users to websites of competitors. As stated above, Respondent’s domain resolves to various webpages including a Yahoo! search page searching for the phrase, “car insurance reviews,” or a webpage that attempts to match users with an insurance company. See Compl., at Attached Annex. 10. As Complainant claims to be in the insurance industry it is possible that users seeking Complainant’s legitimate domains will instead reach Respondent’s domain and thereby forego giving business to Complainant. Bad faith has been found where a respondent used a confusingly similar disputed domain to resolve to a website offering competing services or a products. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (FORUM Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Therefore, the Panel finds that Respondent has demonstrated bad faith use and registration under Policy ¶ 4(b)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the WAWANESA mark at the time of registration based on the domains incorporation of the entire WAWANESA mark. Given the totality of the circumstances, the Panel finds that the Respondent had actual notice of the Complainant’s rights in the trademark WAWANESA at the time it registered the disputed domain name and engaged in bad faith use and registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <wawanesa.us> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: July 1, 2016
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