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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CNO Financial Group, Inc. v. David Charles

Case No. D2016-1402

1. The Parties

The Complainant is CNO Financial Group, Inc. of Carmel, Indiana, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is David Charles of New York, New York, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <colonialpenninsurance.xyz> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2016. On July 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 2016, 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 July 12, 2016 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 July 12, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2016.

At the Complainant’s request on July 20, 2016, the Center suspended the proceedings until August 19, 2016 so that the parties could explore settlement discussions concerning the Disputed Domain Name. At the Complainant’s request, the proceedings were reinstituted on August 22, 2016. The new due date for Response was September 4, 2016. The Respondent sent several communications to the Center on July 15, 2016, August 18, 2016 and September 14 and 17, 2016, which will be referred to below. The Center further invited the Complainant to pursue additional settlement options if it wished to do so, but the Complainant did not request further suspension.

The Center appointed Lynda M. Braun as the sole panelist in this matter on September 20, 2016. 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 financial services holding company that was incorporated in 1979 and began operations in 1982, becoming public in 1985. The Complainant, along with its subsidiaries, including Colonial Penn Life Insurance Company, serves the insurance needs of more than 4 million middle-income working Americans and retirees. The Complainant continues to be a leader in providing affordable life insurance coverage to older Americans and also offers basic life insurance plans to younger age adults.

The Complainant is the owner of trademark registrations in the United States for COLONIAL PENN, specifically United States Registration No. 1,362,432 in International Class 36 for insurance underwriting services, registered on September 24, 1985, and United States Registration No. 1,658,504 in International Class 36 for insurance and financial services, registered on September 24, 1991 (collectively, the “COLONIAL PENN Mark”). In addition, the Complainant is the owner of the domain name <colonialpenn.com>, which resolves to “www.colonialpenn.com”, the Complainant’s official website through which the Complainant advertises and promotes its products and services.

The Respondent registered the Disputed Domain Name on March 4, 2016. The Disputed Domain Name previously resolved to a website that informed users that the website is offline due to a recent security threat. As of the writing of this decision, the Disputed Domain Name resolves to a parking page that states: “This site can’t be reached. The webpage at http://colonialpenninsurance.xyz/ might be temporarily down or it may have moved permanently to a new web address”.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not submit a formal response to the Complaint. However, the Respondent sent several communications to the Center expressing his willingness to explore settlement options and transfer the Disputed Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the COLONIAL PENN Mark based on both longstanding use and its incontestable federally registered trademarks. The Disputed Domain Name <colonialpenninsurance.xyz> consists of the COLONIAL PENN Mark followed by the word “insurance”, and followed by the generic Top-Level Domain (“gTLD”) “.xyz”.

The Panel finds that the Disputed Domain Name <colonialpenninsurance.xyz> is confusingly similar to the Complainant’s COLONIAL PENN Mark. It is well established that the addition of a descriptive or generic word to a mark does not avoid confusing similarity to a complainant’s trademark. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where the word “shop” was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks). This is especially true where, as here, the descriptive or generic word “insurance” is associated with the Complainant and its services. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

Finally, the addition of a gTLD such as “.xyz” in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its COLONIAL PENN Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name to deceive potential customers into believing that the Respondent is associated or affiliated with the Complainant.

In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, bad faith may be found where the Respondent knew or should have known of the registration and use of the COLONIAL PENN Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name decades after the Complainant first registered and used registrations the COLONIAL PENN Mark.

Given that the Respondent has coupled the Complainant’s COLONIAL PENN Mark with “insurance”, a word descriptive of the Complainant’s services, the Panel finds that the Respondent chose the Disputed Domain Name with the Complainant and its mark in mind.

Moreover, the longstanding and public use of the COLONIAL PENN Mark would make it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.

Second, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s COLONIAL PENN Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known COLONIAL PENN Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”).

As evidenced by the Complainant, the message appearing at the website linked to the Disputed Domain Name instructed prospective clients not to contact the corporate office and for the existing clients to contact their case managers via cell phone or email address they provided. Through such message, the Respondent sought to impersonate the Complainant thereby disrupting the Complainant’s business and misleading the Complainant’s current and prospecting clients into believing that the Disputed Domain Name is operated by the Complainant. The Panel finds this use as a clear indication of the Respondent’s bad faith.

Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s COLONIAL PENN Mark.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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, <colonialpenninsurance.xyz>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: September 29, 2016

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