WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. Tim Parker
Case No. D2014-0655
1. The Parties
The Complainant is Nationwide Mutual Insurance Company of Columbus, Ohio, United States of America (“US”), represented by Ice Miller LLP, US.
The Respondent is Tim Parker of Charlotte, North Carolina, US.
2. The Domain Names and Registrar
The disputed domain names <nationwideautoapproval.com>, <nationwideautocredit.com> and <nationwideautolending.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 13, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on June 11, 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.
4. Factual Background
The Complainant and its affiliated companies offer an array of insurance and financial services and products in the United States under the NATIONWIDE mark and other NATIONWIDE-formative marks (hereinafter collectively referred to as the “NATIONWIDE marks”). The Complainant, originally founded in Columbus, Ohio in 1926 as Farm Mutual Automobile Insurance Company, has offered services under the NATIONWIDE mark since 1955, and holds a number of United States registrations for its NATIONWIDE marks.
The Complainant initially registered the NATIONWIDE mark with the United States Patent and Trademark Office (USPTO) in August 1968 for insurance services. The Complainant thereafter registered NATIONWIDE and NATIONWIDE FINANCIAL SERVICES for use with financial services in November 1996 and February 1996, respectively; NATIONWIDE FINANCIAL for insurance and financial services in December 2003; NATIONWIDE ADVANTAGE MORTGAGE for mortgage lending and brokerage services in February 2004; and NATIONWIDE BANK for banking services in October 2007. Nationwide Bank’s products and services include the financing of new and used automobile purchases.
The Respondent provides online automobile loan financing services. The Respondent registered the disputed domain name <nationwideautolending.com> on January 5, 2006. The disputed domain name <nationwideautoapproval.com> was registered by the Respondent on April 3, 2006, and the disputed domain name <nationwideautocredit.com> was registered on November 18, 2010.
Currently, the disputed domain name <nationwideautolending.com> resolves to an active website at “www.nationwideautolending.com” (the “nationwideautolending.com website”). The disputed domain name <nationwideautocredit.com> currently resolves to an active website at “www.nationwideautocredit.com” (the “nationwideautocredit.com website”). Both websites offer online auto loan application and approval services, said to involve a network of lenders and dealers throughout the United States that can providing financing for individuals with bad or no credit. The disputed domain name <nationwideautoapproval.com> currently does not resolve to an active website.
The Complainant sent a cease-and-desist letter to the Respondent on or about June 17, 2013, regarding the disputed domain name <nationwideautolending.com>.1 The Respondent replied, declining to discontinue use of the disputed domain name, but subsequently added a disclaimer to the nationwideautolending.com website. The Complainant sent a second cease-and-desist letter in August, 2013, to which it appears the Respondent did not offer a reply.
5. Parties’ Contentions
The Complainant maintains that the disputed domain names are confusingly similar to its NATIONWIDE mark, as each of the disputed domain names incorporates the Complainant’s mark in its entirety. The Complainant submits that it is widely known in the insurance and financial services industry, and that the Complainant and its licensed affiliates and subsidiaries have engaged in the business of providing numerous types of insurance and financial services throughout the United States for 88 years, the last 59 years of which have been under the NATIONWIDE mark. The Complainant asserts that the addition of generic terms such as “auto lending”, “auto approval”, and “auto credit” do not serve to distinguish the disputed domain names from the Complainant’s mark. According to the Complainant, its NATIONWIDE marks are among the most recognized, valued and famous marks in the insurance and financial services industry, and the Complainant maintains strict control over the use of the NATIONWIDE marks. The Complainant asserts that the distinctiveness and fame of the Complainant’s NATIONWIDE marks has been recognized in prior decisions under the UDRP.2
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant explains that the Respondent is using the NATIONWIDE mark without the permission of or license from the Complainant, and avers that the Respondent has not been commonly known by and has no intellectual property rights in the disputed domain names or the term “nationwide.” The Complainant submits that the Respondent was aware of the strength of the NATIONWIDE mark when registering the disputed domain names and that the term “nationwide” is not generic or descriptive of auto loan services. Thus, according to the Complainant, the Respondent is not using the term “nationwide” based on its commonly understood or dictionary meaning.
To the contrary, the Complainant contends that the Respondent is attempting to pass off the active websites to which the disputed domain names resolve as affiliated with the Complainant. The Complainant submits that the Respondent’s websites offer referrals to third party auto and auto loan services. The Complainant describes the services offered by the Respondent as lead generation services to third parties that compete directly with auto financing and loan services offered by the Complainant under its NATIONWIDE marks.
The Complainant submits that it has continuously offered auto financing and auto loan services since as early as 1983, and avers that more than USD 5,000,000 has been spent in marketing expenses related to auto lending services under the NATIONWIDE mark. While the Complainant acknowledges that it does not own a US trademark registration specifically for auto financing and auto loans, the Complainant maintains it has established common law rights in NATIONWIDE respecting such use. In addition, the Complainant contends that the NATIONWIDE registrations are used with a wide variety of services that are closely related to auto financing and auto loan services.
In light of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain names to profit from and trade off the Complainant’s goodwill and divert to the Respondent’s active websites Internet traffic rightly intended for the Complainant to its competitors. The Complainant submits that such use does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names within the meaning of the Policy. The Complainant further asserts that the posting of a disclaimer on the Respondent’s nationwideautolending.com website only after receipt of the Complainant’s cease-and-desist letter is evidence of bad faith.
The Respondent categorically denies all claims and accusations by the Complainant that he registered or is using the disputed domain names in bad faith. The Respondent submits that he chose the disputed domain names because they are generic in nature and accurately describe the Respondent’s business. The Respondent maintains his business provides assistance to subprime credit customers through local dealers and lenders in all 50 US states. According to the Respondent, he started his business upon registering the disputed domain name <nationwideautolending.com> in January 2006, and had absolutely no knowledge that the Respondent was using the NATIONWIDE mark with auto loans or auto financing. The Respondent submits that it was not until being contacted by the Complainant in 2013 that he had any idea that the Complainant provided auto loans.
The Respondent further submits that he began using the disputed domain names <nationwideautolending.com> and <nationwideautoapproval.com> almost two years before the Complainant begin making auto loans. The Respondent, relying on archived records of the Complainant’s natiowide.com website available at “www.archive.org” (commonly known as the Internet Archive), contends that the Complainant did not begin making auto loans until sometime in 2007, following the Complainant’s creation of Nationwide Bank.
The Respondent maintains that he made clear when contacted by the Complainant in 2013 that the disputed domain names were selected because they are generic and accurately describe the Respondent’s business. The Respondent maintains there are a number of other companies that are making a similar generic or descriptive use of the term “nationwide” in connection with auto loans and auto financing, including Nationwide Auto Finance, LLC (“www.nationwidetoledo.com”), in business in Ohio since 2002; and Nationwide Loans (“www.nac-loans.com”), a Chicago, Illinois based business that, according to the Respondent, has been making subprime auto loans since 1954, and currently operates in 24 states. The Respondent observes that these companies, like the Respondent, are making generic or descriptive uses of the term “nationwide” and began doing so before the Complainant begin making auto loans through Nationwide Bank. The Respondent further points to third-party registrations of nationwide-formative domain names used in connection with various other goods and services.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s NATIONWIDE mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 the panel applied a test which expressly disavowed any call for a likelihood of Internet user confusion; by contrast in Sanofi-Aventis v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, Lotta Carlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.
In this instance, each of the disputed domain names incorporates the Complainant’s NATIONWIDE mark in its entirety, and the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain names to the Complainant’s NATIONWIDE mark is not overcome merely by the addition of descriptive terms such as “auto lending”, “auto approval”, and “auto credit”.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent asserts that he has established rights or legitimate interests in the disputed domain names based on making a good faith, descriptive use of the disputed domain names prior to any notice of this dispute. The Respondent avers this was his intention when registering the disputed domain names, and that the tem “nationwide” as incorporated in the disputed domain names is being used in keeping with its dictionary meaning and not in the trademark sense. The Respondent claims to have so informed the Complainant when first notified of this dispute by the Complainant in June 2013, at which time, by the account of both parties, he informed the Complainant he had no intention of relinquishing the disputed domain names used with his business since as early as January 2006.
A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware of the complainant’s trademark rights or believed in good faith that such use would not violate the complainant’s rights. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424.
Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. In some instances a respondent may form such a good faith believe even when its goods and services compete directly with those of the complainant. See Robin Hanger v. RPM Truck & Trailer Sales - Samantha Holcomb, WIPO Case No. D2013-1092.
The Panel considers that the word “nationwide”, when used in its commonly understood or dictionary meaning, is descriptive or laudatory in nature. It is this descriptive quality of the term “nationwide” that the Respondent maintains is why the disputed domain names were registered for use with his business. The Panel notes that Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. See also National Trust for Historic Preservation v. Barry Preston, supra. It strikes the Panel that this dictionary word is one that traders in many areas of business would find attractive for marketing their respective goods and services, and there is evidence in the record of such third-party use, including some third-party use with auto loans.
The Panel is inclined to accept that the Respondent would have been aware of the Complainant and the Complainant’s NATIONWIDE mark when registering the disputed domain names. However, as the decisions referred to above indicate, in cases where a respondent makes a plausible claim of descriptive use, the dispositive question is not necessarily limited to whether the respondent was aware of the complainant’s trademark rights, although such knowledge clearly is a relevant consideration. The larger question as framed in these decisions is whether, in light of the totality of facts and circumstances of a given case, it has been demonstrated that the respondent’s real aim was to exploit and profit from another’s mark.
Given the foregoing, and in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. However, it is paramount that panels decide cases based on the very limited scope of the Policy. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name has been registered and is being used in bad faith.
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain names in bad faith.4 Notwithstanding the acknowledged strength and reputation of the Complainant’s NATIONWIDE mark, a plausible good faith basis for the Respondent’s registration of the disputed domain names has been asserted (and not rebutted), and a sufficient showing has not been made that the Respondent’s proffered explanation more likely than not is a pretext, or that the Respondent’s objective in registering the disputed domain names more likely than not was cybersquatting. As noted earlier, the Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. See also National Trust for Historic Preservation v. Barry Preston, supra.
At the time of the registration of the disputed domain names, the Complainant’s historic use of the NATIONWIDE mark entailed various insurance and financial services. The financial services claimed in the Complainant’s trademark registrations, at least prior to registration of the NATIONWIDE BANK mark in October, 2007, related to brokering and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, stocks and bonds, and mortgage lending. The Complainant has asserted common law rights in the NATIONWIDE mark for auto loans dating back to 1983, but on balance and based on the limited evidence normally permitted under the Policy, the Panel finds this assertion insufficiently convincing. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Relevant evidence of such rights includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The Complainant produced documents evidencing auto loans made at an earlier time by the Complainant’s federal credit union (now dissolved). It would appear from the documents, however, that such loans were available only to members of the credit union and equally, it is not clear to what extent the credit union advertisements were directed to or seen by the general public.
The Complainant’s asserts that it maintains strict control of the NATIONWIDE marks, but the Panel notes that it nonetheless did not object to the Respondent’s registration and use of the disputed domain names until June 2013. This Panel, in accord with other UDRP panels, generally has declined to apply the doctrine of laches in proceedings under the Policy. The Panel nonetheless recognizes that lengthy delays in seeking legal or administrative remedies can have the effect of eroding the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent’s alleged bad faith in registering and using a domain name. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. Additionally, in this case the record reflects some third-party use of the term “nationwide” in connection with services similar to those offered by the Respondent.
Accordingly, for the reasons summarized above, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
William R. Towns
Date: June 25, 2014
1 The Complainant represents that it was not aware of the other disputed domain names until November 2013.
2 The Complainant sites Nationwide Mutual Insurance Company v. Forum LLC, WIPO Case No. D2006-0309; Nationwide Mutual Insurance Company v. Web Advertising Corp., WIPO Case No. D2007-1416; Nationwide Mutual Insurance Company v. DotaCom Corporation, WIPO Case No. D2007-0157; and Nationwide Mutual Insurance Company v. Nationwide Financial Services Group, Inc., WIPO Case No. D2011-0095.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
4 The Panel does not consider that the Respondent’s passive holding of the disputed domain name <nationwideautoapproval.com> in the context of this case would support a finding of bad faith registration and use under the distinguished panel’s analysis in Telstra Corporation Limited v. Nuclear Marshmallows, supra. As distinguished from Telstra, the Complainant’s mark, although well-known, nonetheless is a dictionary word capable of descriptive use. In addition, there is no indication that the Respondent has attempted to conceal his identity.