WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. Great Wall Domains
Case No. D2005-1251
1. The Parties
The Complainant is Nationwide Mutual Insurance Company, Columbus, Ohio, United States of America, represented by Frost Brown Todd LLC United States of America.
The Respondent is Great Wall Domains, Guiyang, China.
2. The Domain Name and Registrar
The disputed domain name <wwwnationwide.com>is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2005. On December 5, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 5, 2005, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 12, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2006.
The Center appointed Felipe Claro as the Sole Panelist in this matter on January 12, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Nationwide Mutual Insurance Company is a mutual insurance company organized under the laws of the State of Ohio.
Nationwide has engaged in the business of providing numerous types of insurance and financial services throughout the United States for more than 75 years, the last 50 years of which have been under the trademark NATIONWIDE.
Since at least 1955 Nationwide has continuously offered casualty, automobile, life and health insurance as well as financial services under the NATIONWIDE service mark and today offers a full line of property and casualty, commercial, homeowners, automobile, motorcycle, life, health, group accident, fire and disability insurance.
In the early 1960s Nationwide also began offering mutual funds under the NATIONWIDE service mark.
Nationwide also currently offers a full range of financial and financial planning services under the NATIONWIDE mark, including: mortgages, individual annuities, money management, deferred compensation programs, life insurance products, employer-sponsored retirements programs, investment management, mutual funds and public employer pension programs.
Nationwide offers various insurance and financial services under the NATIONWIDE mark in all fifty states.
Nationwide owns, among others, the following federally registered trademarks and service marks for use in connection with insurance and financial services:
NATIONWIDE- Registration No. 854,888, registered August 13, 1968, for underwriting and sale of all lines of insurance, including fire, life, and casualty;
NATIONWIDE (and design)- Registration No. 2,371,088, registered July 25, 2000, for insurance services, namely, underwriting and brokerage of life, health, annuity, fire, property and casualty insurance; and financial services, namely distribution and brokerage of mutual funds, money market funds, pension plans, and IRA plans;
NATIONWIDE- Registration No. 2,017,147, registered November 19, 1996, for financial services, namely the brokerage and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, and stocks and bonds;
NATIONWIDE ADVANTAGE MORTGAGE (and design) - Registration No. 2,811,277, registered February 3, 2004, for mortgage lending and brokerage services;
NATIONWIDE IS ON YOUR SIDE- Registration No. 1,793,850, registered September 21, 1993, for insurance services; namely, underwriting life, health, annuity, property and casualty insurance; financial services; namely, the sale of mutual funds, money market funds, pension plans and IRA plans;
NATIONWIDE FINANCIAL SERVICES - Registration No. 1,955,871, registered February 13, 1996, for financial services, namely, the brokerage of and administration of mutual funds, money market funds, pension plans, and IRA plans;
NATIONWIDE FINANCIAL - Registration No. 2,788,512, registered December 2, 2003, for insurance and financial services, namely, life insurance underwriting; annuity underwriting; mutual fund investment; money market fund investment; administration of pension plans, retirement accounts and retirement plans; asset management services;
Nationwide has used NATIONWIDE as a trademark and service mark continuously and exclusively in connection with its insurance and financial services since at least as early as 1955.
Nationwide has also used well-known slogans in connection with the promotion, marketing and sale of its insurance and financial products, including the registered trademark NATIONWIDE IS ON YOUR SIDE, Registration Number 1,793,850.
Nationwide has used the NATIONWIDE Marks in connection with the offering of financial and insurance services and currently has more than 8,000 exclusive authorized Nationwide agents and more than 160,000 non-exclusive registered representatives who sell Nationwide products, including various insurance and financial services, throughout the United States of America.
Nationwide maintains strict control over the use of the NATIONWIDE Marks by its authorized agents and registered representatives. Nationwide’s financial products and insurance services are offered to the public only through Nationwide, its authorized agents and the registered representatives.
Since 1955, the Nationwide products and services have been advertised extensively throughout the United States of America in print media, on radio and television and sponsorship of public events. Because of this extensive and uniform promotion, marketing and advertisement, the general public and those persons interested in purchasing insurance and financial services have come to associate the NATIONWIDE Marks with Nationwide’s products and services.
Since 1998, Nationwide has expended over $240 million on advertising, marketing and promotional materials with the NATIONWIDE Marks in connection with offering its financial and insurance products and services, through print ads, television, radio, sponsorship of the PGA “Nationwide” golf tour and other means throughout the United States of America.
In addition, Nationwide supports an advertising cooperative for the benefit of its authorized agents in which Nationwide matches up to fifty percent (50%) of the advertising funds spent by agents in advertising Nationwide’s services under the Nationwide Marks.
Since 1980, Nationwide has contributed in excess of $71 million to the cooperative advertising fund, matching in excess of $71 million spent by the authorized agents, themselves, in advertising Nationwide’s products and services, for an additional total of more than $142 million spent on promoting goods and services under the Nationwide Marks since 1980.
The advertising, marketing and promotion of Nationwide’s financial and insurance products and services through the use of the NATIONWIDE Marks for more than fifty (50) years has caused the consumer to recognize the NATIONWIDE mark as an indicator of quality products and service, and seek out and purchase Nationwide products and services rather than those of other providers.
Nationwide’s extensive financial and insurance operations under the NATIONWIDE Marks have made it the largest administrator of qualified retirement plans for the public and private sectors, (as of the end of 2003), the fifth largest provider of variable life insurance (as of the end of 2003), the fourth largest U.S. homeowner insurer, the sixth largest U.S. auto insurer and the seventh largest property and casualty insurer. In addition, Nationwide is currently 99th on the Fortune 500 list, and 297th on the Global 500 listing.
The NATIONWIDE Marks have become and are associated with Nationwide in the minds of consumers for financial and insurance services.
Since 1994, Nationwide has owned and used the <nationwide.com> domain name. Today, customers can manage their retirement account, get insurance quotes, check mortgage rates and do numerous other activities through the “www.nationwide.com” website. Accordingly, the “www.nationwide.com” has become an important asset to Nationwide and a key means of communicating with its customers and the public.
5. Parties’ Contentions
The following is from the Complainant:
In mid-2005, Nationwide became aware that the <wwwnationwide.com> domain name had been registered by Ali Fark. Mr. Fark’s address was listed as 235 W44 St., New York, NY 10025 with an e-mail address of email@example.com. The content posted by “Mr. Fark” on the website was the same as exists today.
On July 29, 2005, Nationwide’s outside counsel sent Mr. Fark a letter via e-mail and regular mail demanding that he cease using the <wwwnationwide.com> domain name and transfer it to Nationwide.
On August 5, 2005, Nationwide’s outside counsel sent Mr. Fark a follow-up letter as Mr. Fark had not responded.
Sometime before August 12, 2005, the registrant information for the domain was changed to Domain Solutions. The e-mail address for all contacts at Domain Solutions is listed as firstname.lastname@example.org.
This is not the first time the owner of the e-mail address email@example.com has been involved in a UDRP proceeding. Indeed, the name Azra Ari Khan and that e-mail address has long been associated with John Barry, a notorious cybersquatter. Mr. Barry’s modus operandi is to, as he did in this instance, change the registrant information as soon as a complaint is received. In Bellevue Community College v. Anti-Globalization Domains, (FA0402000236535 NAF 2004), the panelist noted that the domain registrant information had been changed numerous times, once to “Baby Safe” with an e-mail address of firstname.lastname@example.org, and finally to the “notorious” John Barry. See also, Bates Technical College v. Anti Globalization Domains, (NAF FA0402000236536 2004); Eckerd Corporation v. John Barry d/b/a Azra Ari Khan, Teki Inc., Center for Ban on Drugs, Duke, Duke Inc. and Tech Domains, (WIPO D2003-0329).
Another NAF UDRP decision also went into the details of aliases associated with Azra Kahn and the modus operandi of constantly changing registrant information to other aliases without actually transferring the domain. See Yahoo! Inc. and HotJobs.com, Ltd. v. Alex Vorot a/k/a Arzra Khan, a/k/a Registrate Co., a/k/a NA, a/k/a Andrey Michailov, a/k/a Amjad Kauser, a/k/a Lorna Kang, a/k/a Venta, a/k/a Dotsan, a/k/a Yong Li, a/k/a Mahmoud Nadim, (FA03050015947 NAF 2003).
John Barry, under just the single of his many aliases, Azra Ari Kahn, has had numerous UDRP complaints filed against him. See e.g., Gruner + Jahr Printing & Publishing v. Azra Khan, (NAF FA029000124515); CompUSA Management Co. v. Azra Khan, (NAF FA0208000123921); Best Western Int’l, Inc. v. Azra Khan, (NAF FA0209000125265); Bank of America Corp. v. Azra Kahn, (FA0205000114324); Pella Corp. v. Azra Kahn, (FA0305000159400), Alltel Corp. v. Azra Khan, (FA0209000124995); Blue Cross and Blue Shield Assn. v. Azra Khan, (FA0306000162194); Showboat Inc. v. Azra Kahn, (FA0209000125227); America West Airlines v. Azra Kahn, (FA0301000140626); The Black & Decker Corp. v. Azra Kahn, (FA0212000137223); Bloomberg v. Azra Kahn, (FA0309000192248); Microsoft v. Azra Kahn, (WIPO D2003-0481); PNC Bank, N.A. v. Azra Khan, (WIPO D2002-0701).
John Barry has been known to change registrant contact information to “Ari Kahn” after being notified of an action against him. See SFDH Associates, L.P. v. John Barry, a/k/a, Azra Ari Khan, (WIPO D2004-0017).
John Barry, under the Azra Ari Khan alias has, in the past, displayed a similar modus operandi of registering a “typosquatting” domain by omitting the “dot” in between “www” and the domain name. See e.g., Bank of America v. Azra Khan, (FA02090001245151) (involving the domain <wwwbankamerica.com>); The Black & Decker Corp. v. Azra Khan, (FA0212000137223) (involving the domain <wwwdewalt.com>); Anheuser-Busch, Incorporated v. Anti-Globalization Domains a/k/a Baby Safe a/k/a Azra Ari Khan a/k/a John Barry, (WIPO D2004-0105) (involving the domain name <wwwbudweiser.com>).
Given the vast documented history of John Barry using the Azra Ari Khan alias, living in Brooklyn New York and using Intercosmos Media Group as a registrar, there can be no doubt that email@example.com is John Barry. Indeed, he followed his normal behavioral pattern of changing the registrant information as soon as he was contacted by Nationwide and will, most likely, do so again once this case is filed.
On or about October 11, 2005, the registrant information was again changed, this time to Great Wall Domains (the “Registrant”). Despite the change in registrant information, the “Record Last Updated” information still lists a date of July 1, 2005, indicating that the registration has not been transferred to a new entity, but that the same registrant simply modified the information. This is consistent, as discussed above, with John Barry’s normal modus operandi.
As noted in American Girl, LLC v. Nameview, Inc., 381 F.Supp.2d 876, 879 n.1, “typosquatting” is the bad faith act of using “misspellings or variations of legitimate domain names in order to trick individuals into viewing unrelated advertisements or websites. Typosquatting is profitable because a website with a domain consisting of a common misspelling of a famous trademark generates Internet traffic and, therefore, advertising revenue.” (citations omitted) see also, Shields v. Zuccarini, 254 F.3d 476, 483-84 (3rd Cir. 2001).
Respondent clearly registered <wwwnationwide.com> to typosquat upon the NATIONWIDE Marks and “www.nationwide.com”, Nationwide’s official website through which it conducts a significant amount of business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainants’ undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.
A. Identical or Confusingly Similar
If a domain name incorporates a distinctive mark in its entirety, “it is confusingly similar to that mark despite the addition of other words.” Dell Inc. v. George Dell and Dell Net Solutions, (WIPO D2004-0512) (<dellnetsolutions.com>), citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a/ For Sale, (WIPO D2000-0662) (first element of Policy is satisfied where domain name wholly incorporates complainant’s mark). The <wwwnationwide.com> domain incorporates the NATIONWIDE mark in its entirety, adding only a “www” at the beginning to capture misdirected traffic from those committing a typographical error. Such domains have repeatedly been found to be confusingly similar to the owners’ trademarks in UDRP proceedings.
The disputed domain name <wwwnationwide.com> is confusingly similar to Complainant’s registered NATIONWIDE mark to satisfy the requirements of ¶ 4(a)(i) of the Policy
B. Rights or Legitimate Interests
Respondent has no legitimate interest in the <wwwnationwide.com> domain name. Respondent is not a licensee of, or otherwise currently affiliated with, Nationwide. Respondent’s name does not include the word “Nationwide” and Respondent’s business has nothing to do with the links relating to insurance products and services currently located on <wwwnationwide.com> other than Respondent profits, from misdirecting those searching for information on Nationwide to those competitive links.
Respondent has no rights or legitimate interests in respect to his use of <wwwnationwide.com>. Respondent’s use of this domain to direct traffic to competitive products and services for profit is not a legitimate use. Respondent does not seem to have intention of making any legitimate use of the <wwwnationwide.com> domain name.
Accordingly, Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Respondent registered the <wwwnationwide.com> domain name in an effort to capitalize on the recognition of the NATIONWIDE mark by those seeking financial or insurance services and to capitalize from the misdirected traffic resulting from the typographical errors of those seeking to go to <wwwnationwide.com>.
As is apparent from the website “www.wwwnationwide.com”, respondent set up the website to make money, using the NATIONWIDE Marks.
Further evidence that the Registrant intends to confuse those seeking Nationwide is the link on “www.wwwnationwide.com” to “Ohio State Bowl Game.” Nationwide currently sponsors a “Go to the Ohio State Bowl Game Sweepstakes” where winners receive a trip to the Bowl Game the Ohio State football team plays in at the end of the 2005 season. Nationwide advertised the sweepstakes, among other places, on the back of Ohio State game tickets with instructions to visit “www.nationwide.com” to enter the contest. The Registrant clearly intends to reap the benefit of those searching for the sweepstakes entry form who mistakenly make a typographical error.
Each of the pages reached on “www.wwwnationwide.com” by following a “popular category” link contains “sponsored links.” The Registrant makes money every time a lost Internet user follows one of those links. None of those links are to Nationwide, the entity being sought by those lost browsers.
Registrant’s home page at “www.wwwnationwide.com” was generated, in part by the Domain Sponsor service. That service customizes web-pages to include special sponsored links to products relevant to what the browsers on that site have been looking for. Obviously, browsers at “www.wwwnationwide.com” have been looking for Nationwide, information on its products and information on its sweepstakes. Instead of reaching the desired web-site, those users are misdirected by Registrant, through the use of Domain Sponsor, to Nationwide’s competitors and others who are willing to pay Registrant for the additional traffic. This business model is the epitome of bad faith registration and use.
Respondent has registered and is using the <wwwnationwide.com> domain name in bad faith to benefit from misdirected traffic in search of information on Nationwide, Nationwide’s products and services and Nationwide’s sweepstakes. Indeed, Respondent has tailored the entire site to contain links to products and services in competition with Nationwide. Respondent directly profits from the traffic he intentionally misdirects.
Respondent’s use of the <wwwnationwide.com> domain name containing the NATIONWIDE Mark merely to capture customers of Nationwide who are seeking Nationwide products and services is neither a legitimate, nor good faith, use of this domain. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, Paragraph 4(b)(iv). See also Adobe Systems Incorporated v. Domain Oz, (WIPO D2000-0057).
Respondent is not using this domain in connection with a bona fide offering of goods or services. Respondent’s name does not include the word Nationwide. As such, all of the content currently on the domain is misleading and confusing to consumers. The domain was registered and is being used in bad faith, with a clear intent to profit from confusion. See Research In Motion Limited v. Dustin Picov, (WIPO D2001-0492) (when a domain name is obviously connected with a Complainant and its products, its very use by a Registrant with no connection to the Complainant suggests “opportunistic bad faith”).
Respondent registered <wwwnationwide.com> long after the Nationwide Marks had become a famous trademarks of NATIONWIDE, and long after Respondent knew of Nationwide’s superior and prior rights. That Respondent tailored the content on the domain to relate to Nationwide’s business and directed all browsers to competitors of Nationwide demonstrates Respondent’s awareness of Nationwide’s prior rights.
Moreover, the Respondent’s actions has been condemned in numerous previous UDRP proceedings
Accordingly, Complaint has shown Respondent’s bad faith use and registration of the disputed domain name in a manner sufficient to satisfy 4(b) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wwwnationwide.com> be transferred to the Complainant.
Dated: January 25, 2006