DECISION

 

American Fidelity Assurance Company v. Zhi Chao Yang

Claim Number: FA2402002084935

 

PARTIES

Complainant is American Fidelity Assurance Company ("Complainant"), represented by Nicole Kinsley of Foley Hoag LLP, Massachusetts, USA. Respondent is Zhi Chao Yang ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amerricanfidelity.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 22, 2024; Forum received payment on February 22, 2024.

 

On February 25, 2024, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <amerricanfidelity.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 March 4, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of March 25, 2024 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@amerricanfidelity.com. Also on March 4, 2024, the Chinese and English 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 in Chinese and English.

 

On March 26, 2024, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English.  The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). 

 

Complainant contends that i) the disputed domain name is comprised of a misspelling of client's AMERICAN FIDELITY mark, which is composed of English words; ii) the disputed domain name also resolves to a parked page displaying pay-per-click links in English, for employee benefits and insurance services; and iii) it can be reasonably adduced that Respondent is conversant and proficient enough in the English language for the proceedings to be conducted in English regardless of whether Respondent entered into the registration agreement in Chinese.

 

In the absence of Response and given no objection to the Complainant's request for the language of proceeding, after considering the circumstance of the present case, pursuant to UDRP Rule 11(a), the Panel decides English to be the language of the proceeding.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, American Fidelity Assurance Company, was founded in 1960 and offers its customers a variety of insurance, financial and employee benefit services. As a result of Complainant's extensive and continuous use, promotion, and advertising for over 60 years, Complainant's marks are widely associated with its insurance and financial services, and have acquired significant and valuable goodwill. Complainant owns a large-family of AMERICAN FIDELITY-formative trademarks, covering goods and services including insurance, financial and employee benefit services. Complainant owns rights in the AMERICAN FIDELITY mark, inter alia, through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 5,101,440, registered on December 13, 2016). The disputed domain name is virtually identical to the AMERICAN FIDELITY mark, except for the addition of another "r" in "AMERICAN."

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. Using Complainant's mark as a domain name to divert traffic to Respondent's own website displaying links that lead visitors to third-party websites offering employee benefits and insurance services is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the domain name.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent's bad faith is established by the fact that Respondent uses the domain name to divert Internet users to third party websites offering employee benefits and insurance services. Respondent is selling the disputed domain for $7,950, which would far exceed the normal out-of-pocket costs. Respondent is a notorious cybersquatter who has had around 200 adverse UDRP decisions rendered against Respondent. The lack of identifying information regarding Respondent may indicate steps taken to shield its identity, which would be further evidence of bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on August 25, 2022.

 

2. Complainant has established rights in the AMERICAN FIDELITY mark with a device, inter alia, through its registration with the USPTO (e.g., Reg. No. 5,101,440, registered on December 13, 2016).

 

3. The disputed domain name resolves to a website, which hosts third-party hyperlinks relating to Complainant's competitors.

 

4. Respondent offers the disputed domain for sale for the price of $7,950.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant contends that Complainant owns rights in the AMERICAN FIDELITY mark, inter alia, through its registration with the USPTO (e.g., Reg. No. 5,101,440, registered on December 13, 2016). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of trademark registration for the mark "AMERICAN FIDELITY with a device," the Panel finds Complainant has established rights in the "AMERICAN FIDELITY with a device" mark under Policy ¶ 4(a)(i).

 

Complainant further contends that the disputed domain name <amerricanfidelity.com> is virtually identical to the AMERICAN FIDELITY mark, except for the addition of another "r" in "AMERICAN." The inclusion of the dominant portion of a complainant's mark as well as a typo-squatted  version of the mark may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See Alliant Energy Corporation v. See PrivacyGuardian.org / Domain Administrator, FA2056442 (Forum Sep. 2, 2023) ("[T]he Panel finds that the addition of a letter and a generic term such as "inc" and gTLD fails to sufficiently distinguish the disputed domain name from Complainant's mark per Policy ¶ 4(a)(i); see also 

Chevron Intellectual Property LLC v. Rodrigue Wahib, (FA1990964) (Forum May 9, 2022) ("[T]yposquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the newly fashioned string in a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark").  Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

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 at-issue domain names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

         

Complainant asserts Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its AMERICAN FIDELITY-formative marks and the name <americanfidelity.com>. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. 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). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA 1932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy  ¶ 4(c)(ii)."). Here, the WHOIS information identifies Respondent as "Zhi Chao Yang." Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

         

Complainant also argues Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the disputed domain name attempts to confuse users into believing there is an association or affiliation between Respondent and because Respondent offers the disputed domain for sale for the price of $7,950. Complainant provides a screenshot of the disputed domain name's resolving website. 

 

The Panel notes that the use of the disputed domain name which is confusingly similar to Complainant's well-known mark to sell it for the amount of out-of-pocket expense does not constitute a bona fide offering of goods or services or any legitimate non-commercial or fair use. See Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 2075487 (Forum January 10, 2024) ("The Panel notes that the use of the disputed domain name which is confusingly similar to Complainant's well-known mark to sell it for the amount of out-of-pocket expense does not constitute a bona fide offering of goods or services or any legitimate non-commercial or fair use.").  

 

The Panel further finds that use of a domain name to host competing and/or unrelated hyperlinks does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) ("The Panel finds Respondent's use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant's legal services 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 pursuant to Policy ¶ 4(c)(iii)."). Complainant provides a screenshot of Respondent's webpage which features hyperlinks advertising multiple third parties for "Employee Insurance" and "Employee Benefits" as well as Complainant's own website. Thus, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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.

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and uses the disputed domain name in bad faith because Respondent attempts to attract users for commercial gain by redirecting users to a parked website with third-party hyperlinks. When a respondent holds a disputed domain name to redirect users to third-party links, both related and unrelated to a complainant's business, to attract users for commercial gain demonstrates bad faith registration and use. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) ("Respondent's hosting of links to Complainant's competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)"); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant's business, through which the respondent presumably commercially gained). As noted above, the disputed domain name's resolving website hosts competing hyperlinks such as for "Employee Insurance" and "Employee Benefits" as well as Complainant's own website. Therefore, the Panel finds Respondent's bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iv). 

 

Next, Complainant argues that Respondent registered and uses the disputed domain name in bad faith as Respondent offers the disputed domain name for sale for the price of $7,950, which would far exceed the normal cost out-of-pocket costs associated with an inactive domain name registered less than two years ago. The Panel finds that a general offer for sale may be sufficient to establish registration and use in bad faith per Policy ¶ 4(a)(iii). See Arris Enterprises LLC v. Milen Radumilos, FA 2072536 (Forum Dec. 28, 2023) ("Respondent is offering to sell the disputed domain name, and a general offer for sale may be sufficient to establish registration and use in bad faith per Policy ¶ 4(a)(iii). Further, the offer is for a price far in excess of the out-of-pocket registration fee. An offer to sell a disputed domain name with an inflated price may act as further evidence of bad faith registration and use."); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) ("A respondent's general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).").

 

The Panel recalls that Complainant provides a screenshot of the disputed domain name's resolving website showing that the disputed domain name is offered for sale for the price of $7,950. The Panel concludes that the offer is for a price far in excess of the out-of-pocket registration fee, and Respondent's general offer for sale for a price far in excess of the out-of-pocket registration fee of the disputed domain name, which is confusingly similar to Complainant's well-known mark, constitutes bad faith registration and use.

 

Complainant further argues Respondent had both constructive and actual notice of Complainant's trademarks. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. The Panel infers, due to the notoriety of Complainant's marks and the manner of use of the disputed domain name hosting hyperlinks to third-party business offering insurance services related to Complainant's services as well as Complainant's own website that Respondent had knowledge of Complainant's rights in Complainant's marks 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).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <amerricanfidelity.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 31, 2024