WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caja de Seguros Reunidos, Compañía de Seguros y Reaseguros, S.A. v. Privacy Gods Limited / John Cameron
Case No. D2015-1800
1. The Parties
The Complainant is Caja de Seguros Reunidos, Compañía de Seguros y Reaseguros, S.A. of Madrid, Spain, represented by Alesci Naranjo Propiedad Industrial SL, Spain.
The Respondent is Privacy Gods Limited / John Cameron of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented.
2. The Domain Name and Registrar
The disputed domain name <caserexpatinsurence.com> is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2015. On October 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 16, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2015. On November 6, 9 and 10, 2015, the Respondent submitted email communications to the Center. On November 10, 2015, the Respondent requested an extension of the Response due date. On November 12, 2015, the Center extended the Response due date to November 16, 2015. The Response was filed with the Center on November 16, 2015.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 24, 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 in this proceeding is Caja de Seguros Reunidos, Compañía de Seguros y Reaseguros, S.A., an insurance company from Spain. It was established in 1942 and is currently a recognized market leader in the Spanish residential and home insurance market. It has a market share of 4.5 percent, more than 20,000 points of sale in Spain and had a turnover of EUR 2,566 million in 2010.
The Complainant owns several trademarks containing the term "caser", such as:
- CASER, Spanish Trademark Registration ES M2447345, registered for class 36 (insurance services), filed on January 9, 2002, granted on August 1, 2002;
- CASER GRUPO ASEGURADOR, Spanish Trademark Registration ES M2447343, registered for class 36, filed on January 9, 2002, granted on August 1, 2002;
- CASER SEGUROS, Spanish Trademark Registration ES M2855061, registered for classes 16 and 36, filed on December 2, 2008, granted on May 6, 2009.
The Complainant furthermore owns several domain names containing the term "caser", such as:
- <caserexpatinsurance.com>, created and registered on December 14, 2012;
- <caserexpatinsurance.eu>, created and registered on February 14, 2012.
The disputed domain name is <caserexpatinsurence.com>, created and registered by the Respondent on October 2, 2010.
5. Parties' Contentions
The Complainant contends that all three requirements stated in paragraph 4(a) of the Policy are met in the present case.
(1) The disputed domain name is identical or confusingly similar to the Complainant's trademark
The Complainant contends that CASER is a reputed and well-known trademark. An Internet search of the term with Google produces thousands of results referring to the Complainant. Furthermore, the exhaustive list of domain names incorporating "caser" which the Complainant has registered causes the majority of Internet users to associate CASER with the Complainant.
The disputed domain name incorporates the term "caser" covered by its trademarks and combines it with "expat" and "insurence". The Complainant states that "caser" has no meaning in itself; it is an acronym of the Complainant's corporate name. "Expat" (meaning expatriates) and "insurence" (meaning insurances) are descriptive terms, describing the services the Complainnant offers. Moreover, the disputed domain name exactly matches some listed domain names owned by the Complainant with different Top-Level Domains. The term "caserexpatinsurence" does not make sense per se except in relation to the Complainant.
In view of these circumstances, the Complainant contends that the registration of the disputed domain name has the purpose to misappropriate the reputation built up by the Complainant and to create confusion amongst users, thereby infringing the Complainant's trademark rights.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant submits that the Respondent does not own any sign resembling the term "caser" in the United Kingdom Trademark Office or elsewhere. The Complainant has not granted a license or authorization to use its trademark to the Respondent. Moreover, the disputed domain name does not identify the Respondent's trade name.
The fact that the Respondent was using the disputed domain name does not suffice to create a legitimate right or interest a posteriori. The Respondent was not known by the name prior to registration, and "caserexpatinsurence" was not associated with the Respondent.
The Respondent has and had knowledge of the brand CASER. The web page that can be accessed through the disputed domain name shows several links related to insurance – the "world" of the Complainant.
The fact that the Complainant has not registered the disputed domain name before the disputed domain name was registered by the Respondent does not legitimize the Respondent's stance.
(3) The disputed domain name was registered and is being used in bad faith
The Complainant contends it is "quite impossible" that the Respondent was unaware of the trademark CASER. It is a well-known trademark, nationally and internationally recognized to identify the Complainant. Furthermore, it is a fantasy name that one would hardly come up with if there is no knowledge of the existing trademark.
It is "absolutely impossible" to think that the Respondent would imagine a complex domain name consisting of the terms "caser", "expat" and "insurence" and that the spelling mistake in the last word was innocent.
The Complainant also refers to AT&T Corp. v. Asia Ventures Inc., WIPO Case No. D2015-1012, in which it was stated that "[R]egistration of a famous mark as a domain name, by an entity that has no legitimate relationship to the mark, is itself sufficient to demonstrate bad faith."
The Complainant contends that it is the Respondent's clear intention to prevent the Complainant from reflecting its trademark in a corresponding domain name so that the Respondent can speculate with the sale of the disputed domain name in the future, which is contrary to legitimate use and constitutes proof to the Respondent's bad faith.
The Respondent contends that the proceeding is brought by the Complainant in bad faith. The Respondent has offered to transfer the disputed domain name without receiving a reply from the Complainant. The Respondent deduces from this that there are "other motives" to the proceeding than the transfer of the disputed domain name.
The Respondent furthermore contends that the Complainant has not provided evidence to prove that the disputed domain name was registered and is being used in bad faith as per paragraph 4(a)(iii) of the Policy.
6. Discussion and Findings
Before dealing with the requirements of paragraph 4(a) of the Policy, the Panel must consider the impact of the Respondent having offered to transfer the disputed domain name to the Complainant without having received a response from the latter. The Respondent submits that the Complainant acted in bad faith in carrying on with the proceeding although a settlement offer was made.
This issue was addressed by the UDRP panel in Valero Energy Corporation, Valero Refining and Marketing Company v. Linkz Internet Services, WIPO Case No. D2008-0479,: "The Complainant did not agree to settle and chose to continue with these proceedings. This decision was of course open to the Complainant. However the Panel must agree with the Respondent's comments that in doing so, the Complainant has only caused itself further delay in having the disputed domain name transferred to it". These considerations equally apply to the present case; the Complainant was therefore free to carry forward the proceeding and did not act in bad faith. It is unclear what "other motives" the Respondent is referring to, hence they are not considered.
Another issue is section C of the Response, using the online submission form offered by the Center. The online submission form contains an optional clause at section C which the Respondent may – "in connection with an agreement between the Parties, or in its own discretion" – include in the Response. Such clause "if included, informs the Complainant, the WIPO Center, the Registrar(s), and the Administrative Panel (if subsequently appointed) that the Respondent consents to the remedy requested by the Complainant".
The Respondent has included the optional clause in his Response as follows: ". The Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain name(s)." This however, is not the phrase proposed by the online form. The crucial word missing is "transfer", as the online form proposes the phrase "(T)he Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain name(s) to the Complainant". Without it, the phrase has a fundamentally different meaning and cannot be held to constitute a genuine and unilateral consent to the transfer of the disputed domain name (as it was for example present in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132).
As such, the Panel will not order a transfer without considering the merits of paragraph 4(a) of the Policy.
According to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the 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.
In the following, the Panel will discuss in consecutive order if each of these requirements are met here.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark CASER due to registration at the Spanish Patents and Trademarks Office. As referenced by the Complainant, UDRP panels have considered CASER to be well known in Spain and known abroad (e.g., Caja de Seguros Reunidos v. Milan Kovac/seguroscaser.com Privacy-Protect.org, WIPO Case No. 2011-2052).
The issue of whether a domain name is confusingly similar to a mark is determined through a direct comparison of the mark and the domain name (Group Kaitu, LLC, Darkside Productions, Inc. v. NetDirect, WIPO Case No. D2011-0220). Numerous UDRP panels have found that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong, paragraph 4(a)(i) of the Policy (e.g., Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500). This applies especially to cases where descriptive words are used which refer to the Complainant's field of business (Barclays Bank PLC v. David Neilson, WIPO Case No. D2012-0511).
The disputed domain name fully incorporates the term "caser". The other two terms "expat" and "insurence" are descriptive, referring to insurances (with a common misspelling of "e" instead of "a" in the part "insurance") for expatriates, a field in which the Complainant is active. With the term "caser" being identical to the Complainant's mark and "expat" and "insurence" not diminishing the similarity, it is concluded that <caserexpatinsurence.com> is confusingly similar to the trademark CASER owned by the Complainant within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
In the present case, the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, which shifts the burden of production on the Respondent (Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) email@example.com, WIPO Case No. D2006-0478).
The Respondent did not show any proof of rights or legitimate interests in the disputed domain name. As contended by the Complainant, the Respondent was not authorized, licensed or otherwise allowed to make use of its protected trademark. Also, there is no evidence that the Respondent is commonly known by the disputed domain name.
As pointed out by the Complainant, the fact that the Complainant has not registered the disputed domain name prior to the Respondent does not legitimize the Respondent's interests.
Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.
Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which, if found applicable by the Panel, are taken to be evidence of bad faith. One of them (paragraph 4(b)(iv) of the Policy) is circumstances showing that the Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Panel agrees with the Complainant that it is unlikely that the Respondent was unaware of the Complainant's rights at registration of the disputed domain name and that the Respondent came up with the disputed domain name without knowledge of the Complainant's rights and activities. The mark CASER is a fanciful mark and well-known in the insurance sector in Spain. The Complainant was established in 1942 and is one of the market leaders in Spain. These circumstances suggest that it is inconceivable that the Respondent was unaware of the Complainant's rights, which indicates bad faith ( TRS, Quality, Inc v. Privacy Protect, WIPO Case No. D2010-0400).
Furthermore, so-called "typosquatting" is evidence for circumstances as stated in paragraph 4(b)(iv) of the Policy (Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568). Typosquatting is the practice of intentionally misspelling an element of a mark (New Dream Network, LLC v. Yuanjin Wu, WIPO Case No. DCO2010-0013). UDRP panels have found that the relevant misspelling does not need to be a misspelling of the mark itself. It is sufficient if the misspelling relates to a word associated with the mark within a domain name (see, e.g., Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994).
The disputed domain name misspells the word "insurance", a descriptive word associated with the trademark CASER. The Complainant is active in the insurance business and owns the Spanish trademark CASER at least since 2002. The Panel finds that the combination of "caser" with "expat" and a misspelt word "insurance" to form the disputed domain name constitutes "typosquatting" and is aimed at attracting Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source of the Respondent's website. This is confirmed by the fact, that the Respondent's website shows sponsored links related to insurance, the core business of the Complainant. In that regard, the Panel accepts the Complainant's submission that the spelling mistake was not "innocent". As submitted by the Complainant, it was rather aimed at misappropriating the reputation built up by the Complainant and at creating "confusion amongst users", thereby deriving commercial benefit from a typographical error. This is evidence of bad faith use under the Policy (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444).
Considering the aforementioned circumstances, the Panel finds that the Complainant has provided sufficient evidence to prove that the disputed domain name was registered and is being used in bad faith as required 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 disputed domain name <caserexpatinsurence.com> be transferred to the Complainant.
Date: December 9, 2015