Chubb Limited v. Robert Forbes
Claim Number: FA1606001681970
Complainant is Chubb Limited (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Robert Forbes (“Respondent”), represented by Joseph P. Kincart of Ideation Law PLLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acewestchesterinsurance.com>, registered with GoDaddy.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2016; the Forum received payment on June 30, 2016.
On July 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <acewestchesterinsurance.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@acewestchesterinsurance.com. Also on July 1, 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.
A timely Response was received and determined to be complete on July 25, 2016.
On August 8, 2016, an Additional Submission by Complainant was received. Complainant’s Additional Submission was timely according to Supplemental Rule #7.
On August 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Chubb Limited, is the holding company of the Chubb Group of Insurance Companies. In connection with its insurance company holdings Complainant has used and registered the ACE WESTCHESTER mark with the United States Patent and Trademark Organization (“USPTO”) (Reg. No. 4,072,972, registered December 20, 2011). Respondent’s domain, <acewestchesterinsurance.com>, is confusingly similar to Complainant’s ACE WESTCHESTER mark as the domain merely differs through the addition of the generic term “insurance.”
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has not acquired trademark rights in the disputed domain.
Respondent’s use of the domain to divert internet users to the
commercial website of another is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent registered the disputed domain name after selling the domain <westchesterinsurance.com> to Complainant which indicates Respondent’s knowledge of Complainant’s rights in the ACE WESTCHESTER mark. Respondent’s knowledge can also be inferred from the similarity between the disputed domain and Complainant’s marks.
B. Respondent
Respondent’s domain is not confusingly similar to any of Complainant’s marks because of the widespread use of the terms contained in the disputed domain name and Complainant’s actions and lack of actions related to the marks.
Additionally, Respondent’s use of the term “ace” was to personally associate the business with Respondent whose nickname is “Ace.”
Respondent has rights or legitimate interests in the disputed domain name. Respondent registered the domain to further his legitimate business providing insurance in Westchester County, New York.
Respondent did not register the disputed domain in bad faith and is not currently using the domain in bad faith. Respondent did not sell the <westchesterinsurance.com> domain to Complainant. Rather, Respondent was approached by a third party that pressured Respondent to sell the <westchesterinsurance.com> domain until Respondent eventually gave in. Complainant has acted in bad faith through withholding material information from the Panel and demonstrating a pattern of deceit in this proceeding.
The Panel may note that the disputed domain name was created on May 18, 2016.
C. Additional Submissions- Complainant
Respondent made a litany of erroneous or misleading statements in its July 25, 2016 Response regarding Complainant’s well-established, distinctive, and registered ACE WESTCHESTER marks.
Complainant ferociously defends its intellectual property rights, including its ACE and ACE WESTCHESTER service marks.
The claim that Respondent’s nickname is allegedly “Ace” is irrelevant. Respondent never alleges that he has done business under the ACE service mark.
Respondent’s sale of the <westchesterinsurance.com. domain name registration establishes Respondent’s knowledge of Complainant and its ACE WESTCHESTER brand.
Complainant included copies of its ACE WESTCHESTER and ACE WESTCHESTER SPECIALTY GROUP registration certificates with its complaint, and mentioned both registrations in the body of the complaint. Both of these registrations are for insurance services.
Respondent admits that he has never used the mark ACE or ACE WESTCHESTER in connection with his family’s insurance brokerage business.
Respondent fails to point to a single statement made by Complainant that is false, or a fact presented by Complainant that is untrue.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <acewestchesterinsurance.com> 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 and is being used in bad faith.
Complainant uses the ACE WESTCHESTER mark in connection with its insurance company holdings. Complainant claims that its rights in the ACE WESTCHESTER mark stem from registration of the mark with the USPTO (Reg. No. 4,072,972, registered December 20, 2011). Panels have consistently held that registration of a mark with the USPTO is sufficient to demonstrate rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <acewestchesterinsurance.com> domain is confusingly similar to the ACE WESTCHESTER mark. The disputed domain differs from the mark through only the addition of the generic related term, “insurance,” and the generic top-level domain (“gTLD”) “.com.” Panels have held that the addition of a generic term to a mark in a domain name does not distinguish the domain from the mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Panels have also held that the presence of the gTLD “.com,” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
The Panel concludes Respondent’s <acewestchesterinsurance.com> domain name is confusingly similar to the ACE WESTCHESTER mark in which Complainant has rights.
Complainant has proved this element.
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 contends that Respondent has not acquired any trademark rights in the disputed domain name. Panels have held that a respondent’s failure to acquire rights in a mark related to a domain and not being commonly known by a domain can indicate a lack of rights or legitimate interests in a disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding a lack of rights or legitimate interests where respondent failed to register a mark or become commonly known by a mark). In this case, WHOIS information identifies Respondent as “Robert Forbes,” which does not resemble the disputed domain name. This Panel finds WHOIS information and Respondent’s lack of trademark rights related to the domain indicate that Respondent lacks rights or legitimate interests in the disputed domain and is not commonly known by the disputed domain.
Complainant further contends that Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a generic parked webpage that appears to be parked by the domain name registrar. Panels have held that inactive use of a domain name for a prolonged period of time is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name). The Panel concludes Respondent’s inactive use is not within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. To support this argument Complainant contends that Respondent had actual or constructive knowledge of Complainant’s rights in the ACE WESTCHESTER mark at the time of registration. Complainant claims that based on previously selling a domain to Complainant through a domain agent and through the similarity of the domain and Complainant’s marks it is evident that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acewestchesterinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 22, 2016
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