WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. Whois Agent, Whois Privacy Protection Service, Inc./ Zhichao Yang
Case No. D2015-1129
1. The Parties
The Complainant is Nationwide Mutual Insurance Company of Columbus, Ohio, United States of America, internally represented.
The Respondent is Whois Agent , Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Zhichao Yang of Hefei, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <nationwideonmyside.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2015. On July 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2015, 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 10, 2015 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 10, 2015
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 July 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2015.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on August 17, 2015. 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 mutual insurance company, organized under the laws of the state of Ohio of the USA.
The disputed domain name <nationwideonmyside.com> was registered on December 5, 2014. According to the uncontested allegations of the Complainant, it has engaged in the business of providing insurance and financial services throughout the USA for more than 80 years.
The Complainant owns several trademarks in the USA, among them (i) Trade mark number 854,888 for NATIONWIDE, registered with effect from August 13, 1968 for underwriting and sale of all lines of insurance, including fire, life, and casualty, (ii) Trade mark number 2,017,147 for NATIONWIDE, registered with effect from November 19, 1996 for financial services, namely, the brokerage and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, and stocks and bonds, (iii) Trade mark No. 3,038,893 for ON YOUR SIDE, registered with effect from January 10, 2006 for insurance services, namely, administration, brokerage, and underwriting for all types of insurance etc., (iv) Trade mark No. 3,277,287 for ON YOUR SIDE, registered with effect from August 7, 2007 for providing banking services to others, (v) Trade mark No. 1,793,850 for NATIONWIDE IS ON YOUR SIDE, registered with effect from September 21, 1993 for insurance services; namely underwriting life, health, annuity, property and casualty insurance; financial services; namely, the sale of mutual funds, money market funds, pension plans and IRA plans and (vi) Trade mark No. 3, 369,072 for NATIONWIDE ON YOUR SIDE & Design Mark, registered with effect from January 15, 2008 for insurance services, namely, administration, brokerage, and underwriting for all types of insurance etc.
The services of the Complainant have been advertised extensively throughout the USA, according to the uncontested allegations of the Complainant.
Further, the Complainant is owner of many domain names containing the Complainant’s mark including <nationwideonyourside.com>, <nationwideonyourside.net> and <nationwideonyourside.org>, owned since October 2001 and many other similar domain names.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel can not merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in the USA.
The mere fact that the Respondent has changed from “your” to “my” in the trademark and the disputed domain name does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <nationwideonmyside.com>, is confusingly similar to the Complainants trademarks NATIONWIDE, ON YOUR SIDE and NATIONWIDE ON YOUR SIDE.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: the Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record.
The Respondent does not seem to have any trademark registrations including the terms “nationwide” and/or “on my side”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s argumentation on this point is mainly based on the circumstances mentioned in paragraph 4(b)(iv) of the Policy in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has registered the disputed domain name in bad faith.
The Panel finds it highly unlikely that the Respondent would register randomly and unintentionally a domain name that is identical or confusingly similar to the Complainant’s NATIONWIDE and ON YOUR SIDE trademarks and domain names. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registration and use would be motivated by a hoped-for capitalization, i.e., commercial gain from the Complainant’s reputation.
Further, according to the uncontested allegations of the Complainant, the disputed domain name at the time of filing the Complaint was used to attract users to the Respondent’s site, to direct at such users offers and advertising from itself and/or third parties, for commercial gain.
In addition, the use of the disputed domain name by the Respondent is to encourage consumers to believe that it is connected to the Complainant.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
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 <nationwideonmyside.com> be transferred to the Complainant.
Christos A. Theodoulou
Date: August 31, 2015