WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. NA NA, Digi Real Estate Foundation
Case No. D2007-1135
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 NA NA, Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Names and Registrars
The disputed domain name <natoinwide.com> is registered with BB Online UK Ltd.
The disputed domain name <natonwide.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 3, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name “natonwide.com”. On August 10, 2007, the Center transmitted by email to BB Online UK Ltd. a request for registrar verification in connection with the domain name <natoinwide.com>. On August 6, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 13, 2007, BB Online UK Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 August 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2007.
The Center appointed William Lobelson as the sole panelist in this matter on September 10, 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. Factual Background
The Complainant is Nationwide Mutual Insurance Company, a US insurance and finance company which owns numerous trademark registrations for Nationwide and has been using this brand for many years in relation with insurance and finance services.
The Complainant has become aware of the registration and use by the Respondent of the domain names <natoinwide.com> and <natonwide.com>, which both resolve to web pages containing lists of sponsored links directing to websites dedicated to insurance and finance services.
The Respondent is NA NA, Digi Real Estate Foundation.
The Respondent has filed no response to the Complaint.
5. Parties’ Contentions
The Complainant, known as “Nationwide” and owner of numerous trademarks for “Nationwide”, has been using this brand for many years in relation with insurance services and contends that the registration and use of the disputed domain names <natoinwide.com> and <natonwide.com>, which resolve towards web pages of sponsored links directing to insurance companies, infringes upon its rights. The Complainant contends that the disputed domain names are confusingly similar with its trademarks, that the respondent has no legitimate right in the disputed domain names and that these have evidently been registered and are used in bad faith, in order to unduly benefit from the Complainant’s mark notoriousness and misdirecting traffic resulting from the typographical errors of those seeking the Complainant’s mark on the Internet.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has brought conclusive evidence that it owns trademark rights in the mark NATIONWIDE.
The disputed domain names are <natoinwide.com> and <natonwide.com> and there is in the Panel’s view no doubt that they are confusingly similar to the Complainant’s earlier trademark.
It is well established that the specific top level domain name is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
The simple inversion of the vowels “io” into “oi” in the first disputed domain name and the omission of the vowel “i” in the second disputed domain name are not sufficient to clearly distinguish the same from the Complainant’s mark (LouisVuitton v. Net-Promotion -“LuisVitton.com”, WIPO Case No. D2000-0430).
“Natoinwide” and “Natonwide” remain visually, phonetically and conceptually very close to “Nationwide” and one may fear that an average consumer or Internet user would at least not initially notice any difference; assuming that a particularly vigilant Internet user notices a difference, he may simply believe that the owner of the trademark NATIONWIDE has involuntarily misspelled its mark and thus that the disputed domain names may have the same origin as the Complainant’s mark.
The Panel is therefore of the opinion that there is a high risk of confusion between the disputed domain names and the Complainant’s mark and finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the disputed domain name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant states that it is not related in any manner to the Respondent and that it has not authorized the latter to use or imitate its trademarks; that the Respondent has not been known and has not run any bona fide business in the field of insurance and finance under the disputed names; that it has deliberately misspelled its trademark NATIONWIDE with a view to misdirecting traffic to sponsored links related to insurance and finance for commercial gain.
It is a consensus view of WIPO UDRP panelists (see e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions – and cases cited therin) that the overall burden of proof under paragraph 4(c) of the Policy rests with the complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, the disputed domain name, and that if the respondent fails to answer such case, the complainant is deemed to have satisfied its burden of proof (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Respondent has not denied any of the Complainant’s assertions and has not brought any element showing that it has a right or legitimate interest in the disputed domain names.
The Panel observes that the disputed domain names resolve to webpages which do not of themselves seem to indicate that the Respondent would have any kind of trademark or trade name rights in the names “Nationwide / Natoinwide / Natonwide” and which do not contain any apparent reference to bona fide commercial use of aforesaid names in the course of trade, nor indicate that Respondent has been commonly known by the disputed domain names.
The Panel considers that there is no apparant element in the present case record which would justify a finding that Respondent has rights or legitimate interests in the disputed domain names.
The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with the provisions of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has substantiated its contentions that its trademark NATIONWIDE is notorious and benefits from a high level of reputation and recognition among the public, in the field of insurance and finance services, at least in the United States of America.
As rightly pointed out by the Complainant, even though the Respondent’s address as declared in the WHOIS records is in Panama, the Respondent’s websites (towards which resolve the two disputed domain names) are clearly directed to the US public as they contain references inter alia to major American insurance and finance companies.
The Panel is therefore under the impression that the Respondent is likely to have been aware of the Complainant’s trademark rights in NATIONWIDE when it registered the disputed domain names.
Besides, it is worth emphasizing that the disputed domain names, namely <nationwide.com> and <natonwide.com> are not words of common language and appear totally meaningless other than as a typographical variation of “nationwide”; it thus would appear groundless to register and use the same in relation with insurance and finance services unless the intention is to benefit from misdirected traffic (Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201).
In the Panel’s view, the Respondent has deliberately wrongly spelled the Complainant’s mark and registered the same as domain names. This practice, known as “typosquatting”, indicates that the Respondent acted in bad faith when it registered the disputed domain names (Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728).
The documents supplied in support of the Complaint show that the disputed domain names are not used in relation with a bona fide offer of goods or services. The web sites toward which the disputed domain names resolve are in fact web pages just containing lists of sponsored links, all related to insurance and finance services, most of which are in direct competition with the Complainant’s business.
Some of those links lead to websites that provide quotes on insurance services, competitive to those offered by the Complainant.
The Panel therefore finds that the Respondent intentionally attracts for commercial gain Internet users to sponsored links by creating confusion with the Complainant’s mark. The Respondent misdirects traffic of those seeking information on the Internet about the Complainant towards Complainant’s competitors by taking advantage of typographical errors of Internet users (Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol, WIPO Case No. D2001-0184). Such “typosquatting” must be regarded as use in bad faith of the disputed domain names.
It is highlighted in addition that a number of UDRP proceedings have already been decided against the Respondent, based on similar bad faith issues; this pattern of conduct is another illustration of the Respondent’s bad faith (Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849).
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 names <natoinwide.com> and <natonwide.com> be transferred to the Complainant.
Dated: September 24, 2007