World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intact Financial Corporation v. WhoisGuard / Yenta's Bagels

Case No. D2012-1629

1. The Parties

The Complainant is Intact Financial Corporation of Toronto, Canada, represented by Smart & Biggar, Canada.

The Respondent is WhoisGuard / Yenta's Bagels, Los Angeles, California, United States of America and St, Glace Bay, Nova Scotia, Canada, respectively.

2. The Domain Name And Registrar

The disputed domain name <intactinsurancetoronto.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 11, 2012.

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 the Respondent of the Complaint, and the proceedings commenced on September 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2012.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on October 16, 2012. 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 a provider of home, auto and business insurance with more than USD 4 billion in direct premiums. The Complainant’s business has approximately 7,000 employees, who offer insurance under the INTACT INSURANCE trademark. The Complainant provides insurance to individuals and business through a network of more than 1,800 locally based brokers and directly to consumers throughout Canada.

The Complainant was originally incorporated in 1809 under the name the Halifax Insurance Company. In 1993, the Complainant merged into ING Canada. On February 23, 2009, the Complainant publically announced that ING Canada would be renamed Intact Financial Corporation. The Complainant’s change of name in 2009 was featured in numerous newspapers across Canada. The Complainant from 2009 to-date has extensively advertised, promoted and marketed the name “Intact Financial”.

The Complainant owns several trademark registrations for INTACT INSURANCE, namely:

- INTACT INSURANCE - Canadian Trademark Registration No. TMA 766,164

- INTACT INSURANCE – Canadian Trademark Registration No. TMA 771,756

The Complainant also has several trademark registrations for INTACT and INTACT ASSURANCE:

- INTACT – Canadian Trademark Registration No. TMA 765,931

- INTACT ASSURANCE – Canadian Trademark Registration No. TMA 766,063

- INTACT ASSURANCE – Canadian Trademark Registration No. TMA 766,067

The Complainant owns and operates a website in association with the domain names <intactinsurance.com> and <intactassurance.com>.

The disputed domain name <intactinsurancetoronto.com> was registered on October 27, 2011. At the time the Complaint was filed the disputed domain name reverted to a website that solicited Internet users to seek insurance quotes from five of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The Complainant submits that it owns several registrations for the trademark INTACT INSURANCE, namely Canadian Trademark Registration Nos. TMA 766,164 and TMA 771,756.

The Complainant further contends that the disputed domain name <intactinsurancetoronto.com> is identical to the Complainant’s INTACT INSURANCE trademark except for the addition of geographical designation “Toronto” and the “.com” designation for generic top level domains. The Complainant submits that the geographical designation “Toronto” does not serve to distinguish the disputed domain name from the Complainant’s registered trademarks, since the Complainant’s head office is actually located in the city of Toronto.

Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademarks.

Rights and Legitimate interests

The Complainant submits that the Respondent does not have any legitimate rights or interests in the disputed domain name <intactinsurancetoronto.com>. The Respondent is not commonly known by the name “Intact Insurance”, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain name in a bona fide offering of goods and services. The disputed domain name currently reverts to a website that solicits Internet users to seek insurance quotes from competitors of the Complainant.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name <intactinsurancetoronto.com> in bad faith. The Respondent has registered and is using the disputed domain name in bad faith because (i) it must have been aware of the Complainant’s registered trademark rights in INTACT INSURANCE, when he registered the confusingly similar disputed domain name; (ii) the Respondent is using the disputed domain name in association with the operation of a website that solicits internet users to seek insurance quotes from direct competitors of the Complainant for purposes of monetary gain; and (iii) it registered and is using a confusingly similar disputed domain name to trade on the goodwill and reputation of the Complainant’s registered trademark, and is thereby interfering with the commercial business of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion And Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the mark INTACT INSURANCE by virtue of its Canadian Trademark Registration Nos. TMA 766,164; TMA 771,756.

The Panel further finds that the domain name <intactinsurancetoronto.com> identical to the Complainant’s registered trademark INTACT INSURANCE, except for the addition of the addition of the geographical term “Toronto” and the “.com” designation for generic top level domains. The Panel finds that the addition of a geographical designation does not serve to distinguish a domain name from a trademark. In fact, in the present circumstances, the Panel finds the addition of the word “Toronto” actually increases the likelihood of confusion between the disputed domain name and the Complainant’s trademarks, as it references the city which is the head office for the Complainant’s business.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel notes that the Respondent did not file any responding materials in this proceeding, and therefore did not dispute any of the facts submitted by the Complainant. In the circumstances, the Panel is prepared to find that the Respondent does not have any rights or legitimate interest in the disputed domain name <intactinsurancetoronto.com>.

The Respondent is not commonly known by the name “intact insurance”, and was clearly never authorized or licensed by the Complainant to use the registered trademark INTACT INSURANCE. Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The disputed domain name, at the time the Complaint was filed, reverted to a website that invited Internet users to seek insurance quotes from competitors of the Complainant. The Panel finds that the use of a confusingly similar domain name in this manner is not evidence of a bona fide offering of goods and services.

Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in INTACT INSURANCE when he registered the disputed domain name on October 27, 2011. The Panel further concludes that the Respondent is acting in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by using the disputed domain name in association with a website which invites internet consumers to seek insurance quotes from Complainant’s competitors. This is particularly compelling evidence of bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <intactinsurancetoronto.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Dated: October 22, 2012

 

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