WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. Jost Meyer, a/k/a JM
Case No. D2007-0498
1. The Parties
Complainant is Nationwide Mutual Insurance Company, Columbus, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.
Respondent is Jost Meyer, a/k/a JM, Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nationwdie.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 3, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On April 4, 2007, OnlineNic, Inc. d/b/a China-Channel.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. The Center verified that 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 April 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2007.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on May 31, 2007. 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. Language of Proceedings
On April 16, 2007, the Center notified the Complainant that the Complaint had been submitted in English but that the language of the Registration Agreement for the disputed domain name was Chinese. Pursuant to Paragraph 7 of the Rules, in absence of an Agreement between the parties or as specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. The Center requested the Complainant to provide by April 21, 2007 either an Agreement with the Respondent to proceed in English or a request for English to be the language of the administrative proceedings. On April 20, 2007, Complainant notified the Center that it would be submitting a request that the proceeding be conducted in English by April 23, 2007. On April 23, 2007, Complainant submitted its Request for English language administrative proceeding. In support of its request, Complainant asserted that Respondent’s listed address was in Dallas, Texas, United States, the official language of which is English; that Respondent selected OnlineNIC as its registrar, which is based in San Francisco, California, United States; and that Complainant’s counsel received an e-mail from Respondent which is also in English.
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, unless specified otherwise in the Registration Agreement or “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In this case, the Panel decides that it is appropriate for the language of these proceedings to be in English. In addition to the grounds set forth in Complainant’s Request, this Panel notes the domain name itself is in English characters, and all the text on Respondent’s web page to which the domain name resolves is in English. Finally, Respondent provided no response to Complainant’s request that the proceedings be conducted in English, nor did it respond to the Complaint. Because paragraph 14(b) of the Rules permits the Panel to draw such inferences from Respondent’s default as it considers appropriate, the Panel deems Respondent’s lack of a response to Complainant’s motion as consent thereto. For all of these reasons, these proceedings shall be conducted in English.
5. Factual Background
Complainant is a mutual insurance company located in Columbus, Ohio, United States of America. Complainant owns four incontestable registrations which consist of or include the word NATIONWIDE in connection with insurance services. The earliest of these registrations was issued in 1968 and the latest in 2000, all of which were well before May 13, 2006, the date on which the domain name was registered.
Respondent is an individual located in Dallas, Texas, United States of America. Respondent’s website includes the heading “Nationwide offers a range of retail financial services including mortgages, savings”. The text underneath this heading contains a multitude of permutations of “nationwide.com”. It also includes links to other search sites, including under “health links”, links to various health insurance websites.
6. Parties’ Contentions
Complainant asserts that it was founded in 1926 under the name Farm Bureau Mutual Automobile insurance company and began offering casualty, automobile, life and health insurance under the service mark NATIONWIDE in 1955, the same year it changed its name to Nationwide Mutual Insurance Company. Complainant contends it began offering mutual funds under the NATIONWIDE service mark in the early 1960s. Complainant claims ownership of the following federally registered (United States) trademarks and service marks:
NATIONWIDE, Registration No. 854,888, registered August 13, 1968 for underwriting and sale of all lines of insurance, including fire, life and casualty;
NATIONWIDE & Design, Registration No. 2,371,08, 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 IS ON YOUR SIDE, Registration No. 1,793,850, registered September 21, 1999 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 HEALTH PLANS, Registration No. 2,369,723, registered July 25, 2000 for organizing and administering preferred provider programs in the field of health care services and health care services in the nature of a health maintenance organization and consultation related thereto.
The Panel notes that three of the four registrations have obtained incontestable status.
Complainant asserts that it has also used well-known slogans in connection with promoting and marketing its insurance products, including the slogan “Nationwide is on your side”. This slogan is the subject of federal Registration No. 1,793,850, which is incontestable.
Complainant contends that it has over 8,000 exclusive authorized agents and 160,000 non-exclusive registered representatives who sell products throughout the United States under the mark NATIONWIDE, including various insurance services. Complainant contends that its insurance services are offered to the public only through Complainant, its authorized agents and registered representatives. Complainant contends that it has advertised its products and services under the NATIONWIDE mark throughout the United States since 1955 and that as a result, the general public and those persons interested in purchasing insurance services have come to associate the NATIONWIDE marks with Complainant’s products and services. Complainant contends that it has expended over $240 million dollars on advertising, marketing and promotional materials bearing the NATIONWIDE marks since 1998. Complainant contends that its insurance operations under the NATIONWIDE marks have made it, in the United States, the largest administrator of qualified retirement plans for both the public and private sectors, the fifth largest provider of variable life insurance, the fourth largest home owner insurer, the sixth largest auto insurer and the seventh largest property and casualty insurer.
Complainant owns the domain name <nationwide.com>, which it registered in 1994. Complainant contends that its customers can manage their retirement accounts, get insurance quotes, check mortgage rates and perform numerous other activities on the website. Complainant contends that its <nationwide.com> website has become a key means of communicating with its customers and with the public. Complainant contends that it also uses other “Nationwide” domain names, including <nationwidefinancial.com> and <nationwideinsurance.com>.
Complainant contends that it recently became aware of Respondent’s registration of the domain name <nationwdie.com>. Complainant contends that Respondent’s address in Dallas, Texas is non-existent, and that Respondent’s telephone number as listed in its registration information is missing a digit and therefore is not a valid United States phone number. Complainant contends that it is reasonable to conclude from the foregoing that Respondent provided false information when registering the infringing domain name.
Complainant contends Respondent registered the <nationwdie.com> domain name in an effort to capitalize on the recognition of Complainant’s NATIONWIDE mark by those seeking insurance services and to capitalize on misdirected traffic resulting from typographical errors made by those seeking to connect to Complainant’s official website. Complainant contends that “nationwdie” is not a word and that it makes no sense to register a domain devoted to various services including insurance with this name unless the intention is to benefit from misdirected traffic. Complainant contends that because the heading at the top of each page of Respondent’s website reads “NATIONWIDE”, and not “NATIONWDIE”, this also indicates that Respondent is attempting purposely to benefit from typographical errors entered by Internet users seeking Complainant’s official website “www.nationwide.com”.
Complainant contends that the side panel of Respondent’s “www.nationwdie” website includes category links related to various topics, including “health”. By following the link relating to health or insurance, Internet users are taken to pages full of links to sites of third parties that offer insurance services directly competing with those of Complainant. Complainant contends that nearly every page linked to Respondent’s “www.nationwdie.com” website link to the third party site of a competitor. Complainant contends that Respondent makes money every time an Internet user follows one of those links.
Complainant contends that Respondent registered and is using the <nationwdie.com> domain name in bad faith in order to benefit from misdirected traffic by Internet users searching for information on Complainant and its products and services, and that Respondent specifically tailored its entire site to contain links to products and services competitive with Complainant, and that Respondent profits directly from the traffic which it receives and intentionally misdirects.
Complainant asserts that Respondent registered <nationwdie.com> to typosquat on Complainant’s marks and Complainant’s “nationwide.com” website. Complainant contends that Respondent has no legitimate interest in the <nationwdie.com> domain name; that Respondent is not a licensee or affiliate with Complainant; that Respondent’s name does not include the word “NATIONWIDE” and that its business has nothing to do with the links on Respondent’s website relating to insurance products and services, other than to profit in bad faith from misdirecting those searching for information on Complainant to these competitive links. Complainant contends the conclusion is inescapable that Respondent registered <nationwdie.com> without any legitimate rights or interest in using the domain name, and holds it in bad faith to prevent Complainant from acquiring it and to profit from Internet users seeking information about Complainant and its products and services.
Complainant contends that Respondent is not using its domain name in connection with a bona fide offering of goods and services; that the domain name was registered and is being used in bad faith with a clear intent to profit from any confusion; that Respondent registered the <nationwdie.com> domain name long after Complainant’s marks became famous trademarks of Complainant, and long after Respondent knew of Complainant’s superior and prior rights, as demonstrated by the content on Respondent’s website tailored to health insurance and directed to competitors of Complainant. Complainant asserts that Respondent has a pattern and practice of bad faith registrations of domain names that infringe on the trademark rights of others, citing State Farm Mutual Automobile Insurance Company v. Jost Meyer a/k/a JM, Proceeding No. FA796456 (Nat. Arb. Forum, October 27, 2006), where the Panel found the Respondent’s practices did not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use, and that Respondent had acted in bad faith.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-inclusive, and the panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
Where a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
The Complainant’s four United States trademark registrations, three of which are incontestable, establish Complainant’s rights in the term NATIONWIDE in connection with its insurance services. The domain name <nationwdie.com> transposes two letters of Complainant’s mark but otherwise is identical. A slight difference in spelling between a trademark and a domain name does not reduce the confusing similarity. See Washington Mutual, Inc. v. Phayze, Inc. et. al., WIPO Case No. D2003-0283. The addition of the generic top level domain “.com” to Complainant’s trademark fails to distinguish Respondent’s domain name from Complainant’s trademark. The Panel finds that Complainant has provided sufficient evidence to establish this element under the Policy.
C. Rights or Legitimate Interests
Complainant asserts, and Respondent has failed to rebut, that Respondent is not a licensee or affiliate of Complainant, that Respondent’s business has nothing to do with the links to third party websites which appear on Respondent’s <nationwdie.com> website, and that Respondent’s own name does not include the word NATIONWIDE. As a result, Complainant has established this element of the policy.
D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence satisfying paragraph 4(b)(iv) of the Policy, namely that by using the domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Not only is Respondent’s domain name a misspelling of Complainant’s mark with no dictionary meaning or any other purpose other than to attract Internet users seeking to reach Complainant’s website who mistype the name, but Respondent’s website itself contains many other misspellings and variations of Complainant’s trademark and its website “www.nationwide.com”, apparently in an effort to attract Internet users who enter (and misspell) the name in a search site rather than in an Internet browser. See Media West-DSP, Inc. The Desert Sun Publishing Company v. The HostWebUSA, WIPO Case No. D2002-1084 and cases cited therein. Further evidence that Respondent’s intent is to confuse Internet users is shown by the heading of its website, which includes Complainant’s exact mark NATIONWIDE as the most prominent text on the website. It appears that the main purpose of Respondent’s website is to obtain advertising revenue from Internet users who mistype Complainant’s name and trademark.
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 <nationwdie.com> be transferred to the Complainant.
Jordan S. Weinstein
Dated: June 14, 2007