WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nationwide Mutual Insurance Company (Nationwide) v. PrivacyProtect.org / HEMANG INFRASRUCTURE PRIVATE LIMITED

Case No. D2013-1842

1. The Parties

Complainant is Nationwide Mutual Insurance Company (“Nationwide”) of Columbus, Ohio, United States of America (“US”), represented by Stefanie Hile, US.

Respondent is PrivacyProtect.org of Queensland, Australia; and HEMANG INFRASRUCTURE PRIVATE LIMITED of Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <natiowidebank.com> is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2013, 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 Complainant on November 7, 2013 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 November 12, 2013.

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 November 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2013.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on December 12, 2013. 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 is an American mutual insurance company which has engaged in the business of providing insurance and financial services throughout the US for more than 80 years, the last 58 years of which have been under the NATIONWIDE trademark.

Complainant was founded in Columbus, Ohio in 1926 under the name Farm Bureau Mutual Automobile Insurance Company (“FBM”). In 1955, FBM changed its name to Nationwide Mutual Insurance Company and began offering its casualty, automobile, and life insurance under the NATIONWIDE service mark.

Complainant offers various insurance and financial products and services in all fifty states, in connection with the following US trademarks and service marks (the “Marks”):

a. NATIONWIDE BANK: Registration No. 3,308,449, filed on March 22, 2005, registered on October 9, 2007, for financial services, namely, banking services.

b. NATIONWIDE: Registration No. 0854,888, registered on August 23, 1968, for underwriting and sale of all lines of insurance, including fire, life, and casualty;

c. NATIONWIDE (and design): Registration No. 2,371,088, registered on July 25, 2000, for insurance services, namely, underwriting and brokerage of life, annuity, fire, property and casualty; and finance services, namely, distribution of brokerage of mutual funds, money market funds, pension plans, and IRA plans;

d. NATIONWIDE: Registration No. 2,017,147, registered on November 19, 1996, for financial services, namely, the brokerage and distribution of mutual funds, money market funds, personal pension plans, annuities, and stocks and bonds;

e. NATIONWIDE FINANCIAL SERVICES: Registration No. 1,955,871, registered on February 13, 1996, for financial services, namely, the brokerage of and administration of mutual funds, money market funds, pension plans, and IRA plans;

f. NATIONWIDE FINANCIAL: Registration No. 2,788,512, registered on 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, and asset management services;

Complainant has owned and used <nationwide.com> since 1994 and <nationwidebank.com> since 2003.

The disputed domain name <natiowidebank.com> has been created on March 8, 2008. When the Complaint was filed, Respondent was using a privacy service.

In its verification response, the Registrar disclosed the underlying registrant and its address. The Registrant is Hemang Infrastructure Private Ltd, a company domiciled in Mumbai, India.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to Complainant’s trademark in which Complainant has rights.

Complainant has used NATIONWIDE as a trademark and service trademark continuously and exclusively in connection with its insurance and financial services since at least as early as 1955. It has more than 8,000 exclusive authorized Nationwide agents and more than 160,000 non-exclusive registered representatives who sell Nationwide products, including various insurance and financial services, throughout the US.

Respondent registered the disputed domain name <natiowidebank.com> in an effort to capitalize on the recognition of the NATIONWIDE BANK and NATIONWIDE trademarks by those seeking financial or insurance services and to capitalize from the misdirected traffic resulting from the typographical error of those seeking to go to the website “www.nationwidebank.com”.

“Natiowide” is not a word—it is an obvious misspelling of “Nationwide”—there is no reason for Respondent to have registered the domain name other than its intent to capitalize on misdirected traffic.

Complainant relies on typosquatting cases, such as Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No.D2004-0971, Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073, and Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043.

Complainant contends that it is apparent from the website “www.natiowidebank.com” that Respondent created the website to make money from misdirected Internet users looking for information about Nationwide Bank and/or other insurance or financial services.

According to the communicated screenshot, the website “www.natiowidebank.com” included on the “Related Searches” the following headings “Banks,” “Online Banking,” “Nationwide Bank,” and “Online Banking Account.” Complainant explains that, when an Internet user clicks on the link, he is redirected to a blank search page. Complainant further contends that Respondent makes money every time a lost user clicks on one of the links.

Complainant asserts that on November 7, 2013, the disputed domain name <natiowidebank.com> redirected to the website “www.ecoverage.com”, landing on a page displaying insurance quotes and reproducing the “Ecoverage” logo as well as five other competitors’ logos.

Complainant further asserts that, on November 12, 2013, the disputed domain name redirected to a website advertising credit cards, loans, credit services and insurance.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent does not have rights or legitimate interests in the disputed domain name <natiowidebank.com>, since it is not a licensee of, or is not otherwise currently affiliated with Complainant.

Respondent’s only purpose for registering the disputed domain name is to profit from misdirected traffic attempting to reach the website “www.nationwidebank.com”. Use of a domain name for pay-per-click purposes does not constitute a “bona fide offering of goods or services” and does not confer any right or legitimate interest. (Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).

There is no evidence that Respondent’s name includes the word “Nationwide,” nor, that Respondent offers bona fide products or services related to the website. Respondent profits, in bad faith, from misdirecting Internet users searching for information about Nationwide products or services.

The disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered and is being used in bad faith, with a clear intent to profit from Internet user confusion with the NATIOWIDE trademarks. Complainant relies on Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

Respondent registered the disputed domain name <natiowidebank.com> after the NATIONWIDE trademarks had become famous and relied upon by Nationwide customers. Respondent was aware of Complainant’s trademark rights.

Respondent is capitalizing on the confusion of Internet users seeking Nationwide products and services, which constitutes bad faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, paragraph 4(b)(iv). Complainant relies also on Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To have the disputed domain name transferred to Complainant, it must prove each of the following (Policy, paragraph 4(a)):

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

(ii) Respondent has no rights or legitimate interests 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

Complainant has rights in the NATIONWIDE trademark, protected for banking and insurance services and widely used in US since 1955.

The disputed domain name consists of a misspelling of the NATIONWIDE trademark and the generic word “bank”.

The Panel thus finds that the disputed domain name is confusingly similar to the NATIONWIDE trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):

(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 trade mark 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 consumers or to tarnish the trade mark or service mark at issue”.

Respondent has not filed a Response, and there is nothing in the file suggesting that Respondent might have any rights or legitimate interests in the disputed domain name.

Respondent is using the disputed domain name <natiowidebank.com>, which includes an intentional misspelling of the NATIONWIDE trademark, in order to divert Internet users to a website displaying links connected to banking and insurance services.

Complainant claims that Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links (Lernco, Inc v. Ho Nim, WIPO Case No. D2010-1572).

Complainant has provided evidence that on July 30, 2013, one of the provided links redirected to a blank page. Complainant does not prove that clicking on one of the proposed links displayed on the website “www.natiowidebank.com” redirected to a third party’s website, generating revenue via the pay-per-click advertising system.

When Complainant further asserts that, on November 12, 2013, the disputed domain name redirected to a website advertising credit cards, loans, credit services and insurance, it does not provide any screenshot showing that clicking on one of the links redirected to any related website.

Nevertheless, Complainant has proven that the disputed domain name has been used to resolve to a website “www.natiowidebank.com” related to finance and insurance, which in the circumstances of this case cannot be considered a noncommercial or fair use or a bona fine offering of goods or services.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the disputed 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the disputed 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The Panel finds that Respondent must have been aware of Complainant’s rights when it registered the disputed domain name, since the disputed domain name consists of a misspelling of Complainant’s trademark and the generic word “bank”, which relates to the services Complainant provides.

Respondent chose to register the disputed domain name using a privacy service, in order to hide its identity and used the disputed domain name for a website related to finance and insurance.

Registering a domain name that consists of a misspelling of a trademark and using it for the same services aims at disrupting the trademark owner’s business. It characterizes typosquatting.

The Panel finds that the disputed domain name was registered intentionally to misdirect customers looking for Complainant’s website. This constitutes bad faith registration.

Therefore, the Panel believes that Respondent has registered the disputed domain name in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

Although there is no evidence that the website at the disputed domain name generated pay-per-click revenue, the Panel finds that the disputed domain name is being used for commercial purposes, to divert Internet users by creating a likelihood of confusion with the NATIONWIDE trademark, and to benefit from the trademark’s goodwill.

Accordingly, the Panel finds that paragraph 4(b)(iv) of the Policy is satisfied.

For the above reasons, the Panel finds that paragraph 4(a)(iii) is satisfied in this case and that the disputed domain name was registered and is being used in bad faith.

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 <natiowidebank.com> be transferred to Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: December 28, 2013