WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. Nationwide Financial Services Group, Inc.
Case No. D2011-0095
1. The Parties
Complainant is Nationwide Mutual Insurance Company of Columbus, Ohio, United States of America, represented by Bricker & Eckler LLP, United States of America.
Respondent is Nationwide Financial Services Group, Inc., of Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nationwidefinancialfl.com> is registered with GoDaddy.com, Inc. (The “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2011. On January 18, 2011, the Center transmitted by email to GoDaddy.com, Inc., a request for registrar verification in connection with the disputed Domain Name. On January 21, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification disclosing the registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 21, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 26, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for a Response was February 16, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on February 17, 2011.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on March 3, 2011. 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 (“Complainant”) is a national mutual insurance company. Through itself, its subsidiaries and its licensed affiliates, Complainant offers insurance and financial services in connection with the following United States trademarks and service marks (the “Marks”):
a) NATIONWIDE- Registration No. 854,888, registered August 13, 1968, for underwriting and sale of all lines of insurance, including fire, life, and casualty;
b) 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;
c) 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;
d) 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;
e) 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;
f) NATIONWIDE FINANCIAL NETWORK – Registration No. 3,319,683, registered October 23, 2007 for insurance and financial services, namely, life insurance underwriting; annuity underwriting; mutual fund investment; money market fund investment; administration of pension plans, retirement accounts, retirement plans; and asset management services; and
g) NATIONWIDE ADVANTAGE MORTGAGE (and design) – Registration No. 2,811,277, registered February 3, 2004, for mortgage lending and brokerage services.
Complainant offers a wide variety of insurance and financial services at its website, “www.nationwidefinancial.com”, including investment, securities, retirement and pension plans.
Respondent, Nationwide Financial Services Group, Inc. (“Respondent”) is a business located in Miami, Florida, United States.
Respondent registered the Domain Name, <nationwidefinancialfl.com>, with Registrar, GoDaddy.com, on June 16, 2005. In registering the Domain Name, Respondent made use of the privacy protection feature of the Registrar.
5. Parties’ Contentions
Complainant contends the following:
Respondent registered the Domain Name after Complainant’s Marks had become famous, in an effort to capitalize on the recognition of the Marks by those seeking insurance and financial services.
Respondent has registered and is using the Domain Name in bad faith in an effort to confuse potential consumers searching for auto and property insurance and financial services into thinking that these products and services are offered by Complainant.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is neither a licensee nor affiliate of Complainant.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
Respondent’s use of the Registrar’s privacy protection feature is evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
“In considering those three matters a Panel, by virtue of Rule 14(b) of the Rules, is entitled to draw such inferences as it considers appropriate from the failure by a Respondent to respond to a Complaint.” Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451.
A. Identical or Confusingly Similar
To satisfy this element, Complainant must establish that it has rights to a trademark or service mark and that the Domain Name is identical or confusingly similar to such mark. Policy, paragraph 4(a)(i). As established by prior UDRP decisions, the applicable test is “confined to a consideration of the disputed domain name and the trademark”. The Boucher Group, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-1463 (citing America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004).
Complainant has shown that it owns the trademark NATIONWIDE and NATIONWIDE FINANCIAL in connection with insurance and financial services. The Domain Name incorporates the Marks in their entirety. “[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Respondent’s use of the generic term “FL” in conjunction with its use of the Marks does not detract from the similarity between its Domain Name and Complainant’s Marks. EPSON Europe BV v. M31 Internet Palma, S.L., WIPO Case No. D2005-0604. The Complainant is a nationally-renown company, and its trademarks are well known; further, the Panel finds that the words “nationwide” and “nationwide financial” form the dominant elements of the Domain Name. The term “FL” is not dominant and is a common abbreviation of “Florida.”; it is descriptive and places the focus on the “nationwide” and “nationwide financial” element of the Domain Name.
Additionally, Respondent has not rebutted Complainant’s contention that the Domain Name is identical or confusingly similar to Complainant’s Marks.
The Panel finds that Complainant has rights to the NATIONWIDE and NATIONWIDE FINANCIAL Marks and that the Domain Name is identical or confusingly similar to Complainant’s Marks. Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to Policy, paragraph 4(c), Respondent may demonstrate that it has rights or legitimate interests in the Domain Name by showing:
“(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 noncommercial 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.”
“[I]t is necessary to consider the bona fides of the use, as well as the bona fides of the offer for sale, in determining whether Respondent possesses a legitimate right or interest in the domain name.” Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, WIPO Case No. D2001-1216. Given Complainant’s national presence, it is probable that Respondent, in registering the Domain Name, sought to profit from the Marks’ notoriety. In the absence of any contrary showing from Respondent, the Panel finds that Respondent’s use of the Domain Name is ineligible for classification as a “bona fide” offering of goods or services.
Respondent has provided no evidence that it was or is commonly known by the Domain Name, and it is unlikely that Respondent could make such a showing given Complainant’s early, long-standing, public use of the Marks. In addition, it is clear that Respondent’s use of the Domain Name is neither fair use nor legitimate noncommercial use thereof.
Respondent has offered no evidence or argument to counter Complainant’s case. Thus, the Panel finds that Complainant has satisfied its burden of proof that Respondent possesses no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds substantiated Complainant’s contention that the Domain Name incorporates the Marks in their entirety. Given the fame of Complainant it is inconceivable to the Panel that Respondent was unaware of Complainant’s rights to the Marks. Respondent’s decision to register the Domain Name, which is comprised nearly entirely by the Complainant’s famous Marks, constitutes bad faith. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd., WIPO Case No. D2007-0809, which states:
“This Panel concurs with previous WIPO UDRP decisions holding that incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, ‘knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith'. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.”
The Panel finds further bad faith in the Domain Name’s offer of insurance and financial services which are substantially similar to, and in competition with, those services offered by Complainant at its website, “www.nationwidefinancial.com”.
Furthermore, Respondent’s use of the Registrar’s privacy protection feature suggests an effort to disguise its identity, providing further evidence of bad faith. Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453 (noting that the use of a registrar’s privacy function to hide Respondent’s identity is evidence of bad faith).
In the absence of a Response, Respondent’s apparent intent in registering and using the Domain Name is to disrupt the relationship between Complainant and its current and potential customers by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
In sum, the above facts are sufficient to indicate bad faith pursuant to paragraph 4(b)(iii) and (iv) of the Policy. Therefore, the Panel concludes that Respondent registered and used the Domain Name in bad faith.
For of all the foregoing reasons, in accordance with paragraph 4(i) of the Policy, and paragraph 15 of the Rules, the Panel orders that the domain name <nationwidefinancialfl.com> is transferred to the Complainant.
Maxim H. Waldbaum
Dated: March 15, 2011