DECISION

 

Country Mutual Insurance Company and Country Life Insurance Company v. Company Office / Company

Claim Number: FA2308002057978

 

PARTIES

Complainant is Country Mutual Insurance Company and Country Life Insurance Company ("Complainant"), represented by Matthew L. Cutler of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is Harris Claims Services ("Respondent"), represented by Jason Harris, Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <countrycompaniesinsuranceclaimsajusting.com>, registered with Omnis Network, LLC.

 

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.

 

Dennis A. Foster as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 17, 2023; Forum received payment on August 17, 2023.

 

On August 17, 2023, Omnis Network, LLC confirmed by e-mail to Forum that the <countrycompaniesinsuranceclaimsajusting.com> domain name is registered with Omnis Network, LLC and that Respondent is the current registrant of the name. Omnis Network, LLC has verified that Respondent is bound by the Omnis Network, 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 August 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@countrycompaniesinsuranceclaimsajusting.com. Also on August 21, 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.

 

A timely Response was received and determined to be complete on September 15, 2023.

 

On September 21, 2023, an Additional Submission from Complainant was received, determined to be complete and in compliance with Supplemental Rule 7.

 

On September 22, 2023, an Additional Submission from Respondent was received and also determined to be complete and in compliance with Supplemental Rule 7.

 

On September 17, 2023, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Dennis A. Foster 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

As noted above (see "Parties"), Complainant is composed of two companies, closely related to each other, and registered co-owners of the service marks at issue. The Panel will collectively hereafter refer to both companies as "Complainant," unless specifically mentioned separately. See Country Mutual Insurance Company and Country Life Insurance Company v. Zhichao Yang, FA 1976492 (Forum Jan. 20, 2022); see also Country Mutual Insurance Company and Country Life Insurance Company v. Kapone Jarrett, FA 1888122 (Forum Apr. 13, 2020).

 

PARTIES' CONTENTIONS

A. Complainant

-   Complainant has been in business since 1925, offering various kinds of insurance to people and companies in the United States of America. With more than 5,000 employees and representatives, Complainant serves nearly one million households and businesses. Complainant has operated under many registered service marks, including COUNTRY COMPANIES, and also offers services through its domain names <countrycompanies.com> and <countryfinancial.com>.

 

- Complainant asserts that the disputed domain name, <countrycompaniesinsuranceclaimsajusting.com>, is confusingly similar to several of its registered service marks. Specifically, the disputed domain name includes the full COUNTRY COMPANIES mark, and merely adds a descriptive phrase, "insurance claims ajusting" – with a typographical error for the term "adjusting."  This addition, along with the inclusion of the generic top-level domain ("gTLD"), ".com," fails to avoid confusing similarity between the disputed domain name and the mark.

 

-  Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use Complainant's mark for any purpose. Respondent's website attached to the disputed domain name offers insurance adjustment services that compete with Complainant's insurance services, even presenting Complainant's mark in the process. Furthermore, links on that website refer to Respondent's offerings of insurance adjustment services with respect to some third-party insurance companies. Those uses are neither a "bona fide offering of goods or services" per Policy ¶ 4(c)(i), nor a "legitimate noncommercial or fair use" per Policy ¶ 4(c)(iii). Moreover, there is nothing to suggest that Respondent is commonly known as the disputed domain name, meaning that Policy ¶ 4(c)(ii) fails to apply as well.

 

- With respect to rights or legitimate interests in the disputed domain name, Respondent cannot rely on compliance with the test suggested in the prior Policy decision, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (Wipo Nov. 6, 2001). While Respondent offers services related to Complainant's insurance services, its website links also offer contracting and property repair services. Furthermore, that website fails to accurately disclose the relationship between Respondent and Complainant. Finally, Respondent is attempting to "corner the market" by blocking Complainant's registration of some domain names relating to its service marks and by registration of many domain names that infringe on the marks of third-party insurance companies. In effect, Respondent is using the disputed domain name for "combosquatting;" i.e., utilizing a form of "cybersquatting" where a valid mark is placed in combination with generic keywords in order to drive internet user traffic to Respondent's website.

 

-  The disputed domain name was registered and is being used in bad faith. Respondent is using the disputed domain name to attract, for commercial gain, internet users to Respondent's website based on a likelihood of confusion with Complainant's service mark as to the source, sponsorship, affiliation or endorsement of that website. Moreover, it appears that Respondent is engaged in a pattern of registering and using domain names in bad faith with respect to more than twenty third-party marks attached to a phrase such as "claims adjusting."  Also, Respondent has refused to respond to Complainant's cease and desist letter.

 

B. Respondent

- Respondent is a public adjusting company whose business involves negotiating and adjusting claims against insurance companies such as Complainant. As Complainant is well aware, Respondent, who has operated for decades, is not a competitor of Complainant in selling insurance. Moreover, Respondent is licensed by the state of Illinois to conduct its operations, which Complainant seeks to prevent for its own financial gain.

 

- The disputed domain name is not confusingly similar to any of Complainant's marks, because the website to which that name is attached states clearly that it is owned by Respondent to provide services in adjusting insurance claims against Complainant.

 

-  Respondent has rights and legitimate interests in the disputed domain name. Respondent is an adversary of Complainant, not a competitor of Complainant. As such, Respondent's insurance claim adjustment activities constitute a legitimate business operation for which the disputed domain name is used.

 

-  The disputed domain name was neither registered nor is being used in bad faith. The disputed domain name is used for a website that seeks to represent internet users who are being treated unfairly by Complainant and are in need of claims adjustment services. There is no confusing or misleading wording found at that website with respect to Complainant or its service marks. For example, besides clearly stating Respondent's company name, that website includes other differentiating language such as: "WE ARE PUBLIC INSURANCE ADJUSTERS WHO HAVE BEEN FIGHTING COUNTRY MUTUAL INSURANCE COMPANY AND ADJUSTING FIRE AND WATER CLAIMS FOR OVER TWENTY YEARS!!!"   

 

- Complainant has engaged in reverse domain name hijacking. Complainant is well aware of Respondent's business, as Respondent has adjusted claims against Complainant for decades. Complainant has filed the Complaint in order to reduce Respondent's legitimate representation of claimants against Complainant.

 

C. Complainant Additional Submission

-  Complainant did not lie in the Complaint, and did not bring the Complaint for improper purposes. Although the disputed domain name may have been registered for more than ten years, Complainant only found out that Respondent owned that name after this proceeding was initiated.

 

-  Respondent refers to a prior Policy decision issued in its favor, but neglects to mention a prior Policy decision that went against Respondent. These prior Policy cases only suggest that Respondent is targeting the valid service marks of insurance companies for domain name registration in order to profit illegitimately from confusion with those marks.

 

-   Respondent claims that it is only an adversary of Complainant and not in competition with Complainant. However, in settling insurance claims, Complainant offers its own adjusters or third-party adjusters, so Respondent is indeed in competition with Complainant.

 

-  Respondent cannot claim to offer only insurance claim adjustment services, because the website attached to the disputed domain name suggests that Respondent also offers contracting and repair services. Moreover, that website does not clearly delineate the separation between Complainant and Respondent.

 

D. Respondent Additional Submission

 

-Claimant's claim that it did not know who Respondent is is misleading.

 

-Complainant's claim that it is a competitor of Respondent is in bad faith.

 

-Complainant is not a public adjuster and could never be a competitor of the Respondent.

 

-Complainant's reference to the matter of State Farm is misleading. In fact, it supports a ruling here in favor of Respondent.

 

FINDINGS

Complainant is an established provider of various insurance services, having been in business in the United States since 1925. Complainant conducts its operations under many registered service marks, including COUNTRY COMPANIES, which is registered with the United States Patent and Trademark Office ("USPTO") (i.e., Registration No. 899,420; registered on Sept. 22, 1970).

 

Respondent is the owner of the disputed domain name, <countrycompaniesinsuranceclaimsajusting.com>, which was

registered on October 18, 2010. Respondent has connected the disputed domain name to a website that offers internet users access to insurance claims adjustment services against Complainant.

 

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 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.

 

Identical and/or Confusingly Similar

Complainant has provided the Panel with clear evidence regarding its service mark registration for COUNTRY COMPANIES with the USPTO, and therefore the Panel determines that Complainant has satisfactorily established its rights in that mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018): ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i)."); see also Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015): ("There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant's rights under Policy ¶ 4(a)(i) and its vested interests in a mark.").

 

The Panel observes that the disputed domain name, <countrycompaniesinsuranceclaimsajusting.com>, contains, as its first element, Complainant's full COUNTRY COMPANIES mark, but is not identical to that mark. Instead, included within the disputed domain name is the descriptive term "insurance claims ajusting" (the last word, "adjusting," having been misspelled), along with the ".com" gTLD. Given the descriptive nature of the additional term, and the Panel's determination that the term relates directly to Complainant's insurance business operations, the Panel concludes that the disputed domain name is confusingly similar to Complainant's mark. Moreover, the Panel finds that the added gTLD is inconsequential in this evaluation of confusing similarity. See State Farm Mutual Automobile Insurance Company v. Justin Forkuo, FA 1885352 (Forum Mar. 19, 2020) (finding the disputed domain name, <statefarmautoinsuranceclaims.com>, to be confusingly similar to the STATE FARM mark); see also Shift Technologies, Inc. v. Bogdan Lajos, FA 1969440 (Forum Nov. 16, 2021) ("Since Respondent only adds a descriptive term related to the services provided by Complainant as well as the '.com' gTLD, the Panel finds the disputed domain name is confusingly similar to Complainant's SHIFT mark per Policy ¶ 4(a)(i).").

 

Accordingly, the Panel finds that Complainant has demonstrated that the disputed domain name is confusingly similar to a service mark in which Complainant has rights.

 

Rights or Legitimate Interests

Because Complainant has demonstrated that the disputed domain name is confusingly similar to Complainant's service mark, and Complainant has stated firmly that it has granted no license or permission for Respondent to use that mark, Complainant has successfully presented a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the burden of production shifts to Respondent to provide convincing evidence of those rights or legitimate interests. See 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.").

 

In its rebuttal to said prima facie case, Respondent has contended that it does have rights or legitimate interests in the disputed domain name due to its nominative fair use of the disputed domain name for the purpose of providing legitimate insurance claim adjustment advice. Respondent acknowledges that Complainant also may provide such advice along with its insurance services, but Respondent argues that its services tend to challenge Complainant's insurance services, making Respondent not a competitor of Complainant but an adversary of Complainant.

 

As set forth in the UDRP decision rendered in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (Wipo Nov. 6, 2001), the panel recognized that the Policy does not necessarily prohibit the inclusion of another party's valid trademark or service mark within a domain name in all situations. To analyze the possible merits of nominative fair use in those circumstances, the panel in that case set forth the following test:

(1) [It] must actually be offering the goods or services at issue;

 

(2) [It] must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

 

(3) [Its] website must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site if, in fact, it is only one of many sales agents;

 

(4) [It] must not try to corner the market in all domain names, thus depriving the owner of reflecting its own mark in a domain name.

 

In this case, the Panel finds clear evidence that Respondent is offering insurance claim adjusting services that make it not a competitor of Complainant, but a legitimate adversary of Complainant in seeking to alter insurance claims in favor of Complainant's clients and against Complainant's monetary interests. Moreover, the Panel believes that any "contracting and repair services" offered at Respondent's website are simply a relevant and complementary part of insurance claim adjusting and, contrary to Complainant's contention, not a separate business operation conducted by Respondent.

 

Furthermore, there is insufficient evidence in the Record to suggest that Respondent is attempting to deceive internet users with respect to its offerings, as the website connected to the disputed domain name makes it clear that Complainant is an adversary and not the owner of that website. Finally, as Complainant has domain names based on its service marks, it is apparent to the Panel that Respondent is not attempting to "corner the market" on similar domain names or to deprive Complainant of reflecting its own mark in a domain name.

 

Ergo, the Panel is moved to find that, contrary to Complainant's contention in its filings, Respondent can rely on satisfying the nominative fair use test enumerated in Oki Data Americas, Inc. v. ASD, Inc., supra, to legitimize its ownership of the disputed domain name, and it has done so. See United Services Automobile Association v. Harris Claims Service, FA 2007801 (Forum Sept. 27, 2022).

 

Accordingly, the Panel finds that Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Since Complainant has not proved the second element required under the Policy, the Panel need not consider the Bad Faith third element under the Policy.

 

Reverse Domain Name Hijacking

Respondent has requested that the Panel issue a finding of Reverse Domain Name Hijacking ("RDNH") against Complainant in this case. To do so, the Panel must find that the Complaint was brought in bad faith or to harass Respondent. See UDRP Rules ¶ 15(e).

 

In this case, it has become clear to the Panel that Complainant is well aware of who Respondent is and the business that it conducts because the two have had an adversarial relationship for a decade and more. Complainant failed to disclose this fact in the Complaint, which constitutes an element of bad faith. Moreover, given this relationship, Complainant knew that Respondent conducts legitimate insurance claim adjustment services under the disputed domain name, and thus would prevail as to the second element required under the Policy.

 

Therefore, the Panel does find that that Complainant has engaged in RDNH in this case. See United Services Automobile Association v. Harris Claims Service, supra.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <countrycompaniesinsuranceclaimsajusting.com> domain name REMAIN WITH Respondent.

 

 

 

Dennis A. Foster, Panelist

Dated: October 2, 2023