WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PGA Service Corporation (“PGA”) v. Humberto Chavez
Case No. D2014-0038
1. The Parties
The Complainant is PGA Service Corporation (“PGA”) of Nashville, Tennessee, United States of America (“US”), represented by FairWinds Partners, LLC, US.
The Respondent is Humberto Chavez of Pinar del Río, Cuba.
2. The Domain Name and Registrar
The disputed domain name <the-general.org> (the “Domain Name”) is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed against domain names <general-insurance.net> and <the-general.org> with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2014. On January 13, 2014, the Center transmitted by email to the registrars of these domain names a request for registrar verification in connection with the disputed domain name. On January 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing the contact details.
On January 17, 2014, the registrar of the domain name <general-insurance.net> transmitted by email to the Center its verification response disclosing registrant and contact information for said domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2014, providing the registrant and contact information disclosed by the registrar of the domain name <general-insurance.net>, and inviting the Complainant either to file a separate Complaint for one of the domain names, and file a short amendment to remove the domain name <general-insurance.net> from the current Complaint or provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as the formal Respondents and demonstrating that both registrants are, in fact, the same entity.
On January 23, 2013, the Complainant filed an amended Complaint (hereafter the “Complaint”) dropping the domain name <general-insurance.net> from this administrative proceeding. On January 27, 2014, the Center informed the parties that it would not take any further action with respect to the domain name <general-insurance.net> as a result of the Complainant’s request.
The Center verified that the 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 January 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 26, 2014. 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.
On February 27, 2014, the Panel issued a Procedural Order inviting the parties to put on further evidence in respect to the question of whether the Domain Name had, in the past, resolved to a website located at “www.general-insurance.net”. On the same day the Complainant filed further evidence on this question. The Respondent was provided until March 11, 2014 to file any submissions or evidence in response but chose not to file any such evidence or submissions.
4. Factual Background
The Complainant is an insurance provider based in the United States that specializes in the provision of automobile insurance agency services. The Complainant has provided automobile industry services for over 20 years throughout the United States.
The Complainant is the owner of a word trade mark THE GENERAL with registration number 1,958,636 (the “THE GENERAL Mark”), covering inter alia “underwriting automobile insurance,” which it first registered in 1996. The Complainant operates an active website at “www.thegeneral.com” (the “Complainant’s Website”) and a toll-free phone number at 1-800-GENERAL. The Complainant’s Website features the image of a green animated character, known as “The General”, which operates as a marker of the Complainant’s business.
The Domain Name <the-general.org> was created on November 23, 2011 and transferred to the present Respondent at some point between November 24, 2011 and October 17, 2013. It currently resolves to an inactive site that states “domain not yet active…Are you the domain owner? Log into your control panel to start using your domain”. Prior to the commencement of the proceedings, the Complainant has provided evidence that the Domain Name resolved to an Internet site (the “Respondent’s Website”) located at “www.general-insurance.net” which offers the provision of automobile insurance and contains a green animated character that closely resembles The General.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s THE GENERAL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the THE GENERAL Mark. It owns trade marks for the THE GENERAL Mark in the United States and has significantly promoted those marks.
The Domain Name consists of the THE GENERAL Mark in its entirety with the addition of a hyphen, and is confusingly similar to THE GENERAL Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to link to the Respondent’s Website either to infringe THE GENERAL Mark or to collect personal information from visitors which may then be used for a variety of improper purposes including identity theft. Such use does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent was put on both actual and constructive notice of the Complainant’s rights in THE GENERAL Mark through the Complainant’s extensive prior use of THE GENERAL Mark as well as its various trademark registrations which predate the creation or acquisition of the Domain Name by the Respondent. The Respondent is obtaining commercial gain by redirecting visitors to the Domain Name to the Respondent’s Website. This is a competing insurance agency site which may also be gathering personal information for illicit purposes, as noted above. Upon information and belief, each time a visitor inputs information or purchases an insurance product, the Respondent receives compensation from those offering such services or collecting such information. As such, the nature of the Domain Name itself evidences bad faith registration and use. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
In response to the Procedural Order, the Complainant put on a formal declaration made by its attorney. This declaration stated that on November 13, 2013 prior to the commencement of the proceedings, the Complainant’s attorney visited the website located at “www.the-general.org” and found that it resolved to the Respondent’s Website. It also contained material from the Internet Archive Wayback machine that stated that, on November 3, 2013, the Domain Name redirected to the Respondent’s Website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the THE GENERAL Mark, having registrations for the THE GENERAL Mark as a trade mark in the United States.
The Domain Name consists of the THE GENERAL Mark, with the addition of a hyphen between the two words. The addition of a hyphen is not sufficient to distinguish the Domain Name from the THE GENERAL Mark. The Panel finds that the Domain Name is confusingly similar to the Complainant’s THE GENERAL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
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 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 trademark or service mark rights; or
(iii) you are making 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.” (Policy, paragraph 4(c)).”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the THE GENERAL Mark or a mark similar to the THE GENERAL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Either the Respondent maintains an inactive website at the Domain Name, or, as it appears from the evidence submitted by the Complainant, the Respondent is using the Domain Name to operate a website that, without the permission of the Complainant, makes reference to the Complainant (via the use of The General character) and appears to offer automobile insurance in direct competition with the Complainant, from which the Respondent is likely to receive some revenue.
Either use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.” (Policy, paragraph 4(b)).
In determining whether the Respondent was aware of the Complainant and how the Domain Name was used, it is necessary to reach a conclusion as to whether the Domain Name redirected to the Respondent’s Website (as asserted by the Complainant) prior to the commencement of the present proceedings. Following the receipt of the Complainant’s supplemental filing, the Panel visited the Internet Archive Wayback Machine, which confirmed that on November 5, 2013, the Domain Name redirected to the Respondent’s Website. The Panel concludes that prior to the commencement of the proceedings, the Domain Name redirected to the Respondent’s Website.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the THE GENERAL Mark at the time the Respondent took possession of the Domain Name. The Respondent’s Website sells car insurance services in direct competition with the Complainant and contains a green animated character that closely resembles “The General” a mascot used by the Complainant in its advertising and on its website. The registration of the Domain Name in awareness of the THE GENERAL Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the THE GENERAL Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website offering car insurance, by making reference to the Complainant’s “The General” mascot. It appears both from the Domain Name itself and from the Respondent’s Website that it highly likely that the Respondent has intentionally attempted to attract Internet users to the Respondent’s Website by means of confusion with the THE GENERAL Mark, and received revenue for that activity. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <the-general.org> be transferred to the Complainant.
Date: March 12, 2014