INSURICA, Inc. v. RENEE
Claim Number: FA2306002048016
Complainant is INSURICA, Inc., USA (“Complainant”), represented by Nicole Kinsley of Foley Hoag LLP, Massachusetts, USA. Respondent is RENEE (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lnsurica.com>, registered with Hostinger, UAB.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 7, 2023; Forum received payment on June 7, 2023.
On June 9, 2023, Hostinger, UAB confirmed by e-mail to Forum that the <lnsurica.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 June 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2023 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@lnsurica.com. Also on June 13, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant was founded in 1959, under a prior name, and began using the INSURICA name and trademark in 2009. It is among the largest insurance brokers in the U.S. For nearly 60 years, INSURICA has established a reputation for quality, which since 2009 has been associated with its INSURICA name. Complainant has rights in the INSURICA mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,684,219 registered on September 15, 2009). The disputed domain name is confusingly similar to Complainant’s INSURICA mark because it contains Complainant’s mark in its entirety, except for the substitution of the first “i” in “INSURICA” for the letter “l.”
ii) Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither an agent or a licensee of Complainant, and has never been an agent or a licensee of Complainant. The disputed domain currently resolves to an inactive parked webpage. Failing to make active use of the disputed domain name is not a bona fide offering of goods.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent inactively holds the disputed domain name. Respondent has engaged in typosquatting by deliberately introducing an obvious typographical error and misspelling into the domain name. Respondent had actual knowledge of Complainant’s rights in the INSURICA mark prior to registration of the disputed domain name. Respondent’s bad faith is further evinced by Respondent’s use of a privacy shield to hide its name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on January 26, 2023.
2. Complainant has established rights in the INSURICA mark based upon registration with the USPTO (e.g., Reg. No. 3,684,219 registered on September 15, 2009).
3. The disputed domain currently resolves to an inactive parked webpage.
4. Respondent has engaged in typosquatting.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the INSURICA mark based upon registration with the USPTO (e.g., Reg. No. 3,684,219 registered on September 15, 2009). Registration of a mark with the USPTO is a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the INSURICA mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <lnsurica.com> is confusingly similar to Complainant’s INSURICA mark because it contains Complainant’s mark in its entirety, except for the substitution of the first “i” in “INSURICA” for the letter “l.” The Panel finds that the minor typographical error does not distinguish the disputed domain name from Complaint’s mark. See Twitch, Interactive, Inc. v. zhang qin, FA 1626511 (Forum, Aug. 4, 2015); see also Target Brands, Inc. v. Above.com Domain Privacy, FA1701001714218 (Forum, Mar. 1, 2017) (finding various one-letter misspellings of Target.com to be likely to confuse, and noting that “similar changes have not been found distinguishing by past Forum panels.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 1.10. (“A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s INSURICA mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The Panel notes that the WHOIS information identifies “RENEE” as the registrant. Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has never been an agent or a licensee of Complainant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use because the disputed domain name’s resolving website remains inactive. The Panel finds that failure to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Complainant argues that a passive holding of the disputed domain name constitutes ‘use in bad faith.’ The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.).
The particular circumstances of this case that the Panel has considered are:
i) Complainant was founded in 1959, under a prior name, and began using the INSURICA name and trademark in 2009. It is among the largest insurance brokers in the U.S. For nearly 60 years, INSURICA has established a reputation for quality, which since 2009 has been associated with its INSURICA name. INSURICA has been recognized many times as both a Best Practices Agency and a Best Places to Work employer. In 2018, a leading insurance industry publication, Rough Notes, named INSURICA Agency of the Year. As a result of Complainant’s extensive and continuous use, promotion and advertising, the INSURICA mark is widely associated with INSURICA’s insurance and risk management services and employee benefits, and has acquired significant and valuable goodwill. INSURICA has made a significant investment in developing the INSURICA brand over the course of many years, and it is now a recognizable trademark in the United States; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Next, Complainant contends that Respondent has engaged in typosquatting by deliberately introducing an obvious typographical error and misspelling into the domain name. Respondent’s typosquatting is itself evidence of bad faith under UDRP Policy ¶ 4(a)(iii). See GolfNow, Inc. v. ORM LTD, FA1611001704535 (Forum Jan. 9, 2017) (“Typosquatting is the practice of using a deliberate misspelling of a complainant’s mark in order to take advantage of common typing errors, and is independent evidence of a respondent’s bad faith under Policy ¶¶ 4(a)(iii).”); see also Holland & Hart LLP v. Rob Keating FA2304002042077 (Forum May 25, 2023) (“Respondent’s registration of the disputed domain name constitutes typosquatting, and this is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel notes that the disputed domain name incorporates Complainant’s INSURICA mark in its entirety, except for the substitution of the first “i” in “INSURICA” for the letter “l.” Therefore, the Panel finds that Respondent has engaged in typosquatting, which constitutes bad faith registration and use of the disputed domain name UDRP Policy ¶ 4(a)(iii).
Complainant further argues that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the INSURICA mark given the reputation and fame of Complainant’s INSURICA mark as well as the similarity of the disputed domain to Complainant’s INSURICA mark. The Panel infers, due to the notoriety of Complainant’s mark and Respondent’s engagement in typosquatting in association with the disputed domain name that Respondent had knowledge of Complainant’s rights in the INSURICA mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith 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 <lnsurica.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 12, 2023
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