WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hartford Fire Insurance Company v. WhoisPrivacy Services Pty Ltd. c/o Domain Hostmaster, Customer ID: 08529285001098 / Jeff Lander
Case No. D2015-2223
1. The Parties
The Complainant is Hartford Fire Insurance Company of Hartford, Connecticut, United States of America ("United States") represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is WhoisPrivacy Services Pty Ltd. c/o Domain Hostmaster, Customer ID: 08529285001098 of Fortitude Valley, Queensland, Australia / Jeff Lander of Panama.
2. The Domain Name and Registrar
The disputed domain name <hardfordinvestor.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 7, 2015. On December 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 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 December 11, 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 December 11, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2016.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 11, 2016. 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 related entities (hereinafter "The Hartford" and/or "the Complainant"), whose business was founded in 1810, operate one of the largest insurance and financial services businesses in the United States. The Hartford is a leading provider of investment products.
The Hartford has provided and continues to provide its products and services under the marks HARTFORD, THE HARTFORD and other HARTFORD-inclusive marks (collectively "the HARTFORD Marks").
The Hartford spends tens of millions of dollars annually on advertising and promoting the HARTFORD Marks and its products and services under the HARTFORD Marks, including via television, radio, print media, and on the Internet.
The Complainant holds several domain names including the HARTFORD Marks and amongst these also the domain names <thehartford.com> and <hartfordinvestor.com> which were registered respectively on June 11, 1995 and October 5, 2000.
A cease and desist letter regarding the disputed domain name <hardfordinvestor.com> was sent to the Respondent (via email) on September 16, 2015 without receiving a response.
The Complainant owns, amongst others, the following trademarks:
US trademark THE HARTFORD No. 1155051 registered on May 19, 1981 (first use in 1971) – Insurance underwriting service in Class 36.
US trademark HARTFORD No. 2,153891 registered on April 28, 1998 (first use in 1996) – Asset management, investment, retirement planning services in Class 36.
The disputed domain name was registered on January 7, 2004.
The website at the disputed domain name displays a parking page provided by the Registrar, where pay-per-click advertisements and hyperlinks are displayed.
The disputed domain name is being offered for sale at "www.sedo.com" for an unspecified price.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's HARTFORD Marks; that the Respondent has no rights or legitimate interests with respect to the disputed domain name nor is the Respondent a licensee of the Complainant; and that the Respondent registered and is using the disputed domain name in bad faith for the following reasons:
1) The Complainant's HARTFORD Marks were registered, used and extensively promoted well before the Respondent registered the disputed domain name <hardfordinvestor.com>; thus the Respondent, when it purportedly registered/acquired the disputed domain name on December 20, 2010 was aware of the Complainant's HARTFORD Marks and rights.
2) The Respondent is trying to take advantage of the HARTFORD Marks in order to confuse consumers and trade on the Complainant's rights and reputation and to drive traffic to its own website, all for its own commercial benefit. Therefore, the Complainant submits that the website has been registered to commercially profit from the likelihood of confusion between the trademark and the disputed domain name.
3) The Respondent registered the disputed domain name with the intention of profiting from its sale to the Complainant or some other third-party;
4) The Respondent is a serial cybersquatter, with several UDRP decisions against him, which further shows that the Respondent's use and registration of the disputed domain name are in bad faith;
5) The Respondent's use of the privacy protection service suggests bad faith;
6) The website at the disputed domain name displays a parking page provided by the Registrar, where pay-per-click advertisements and hyperlinks, including some that refer to services competing with those of the Complainant, are displayed.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to obtain the transfer of the disputed domain name, the Policy paragraphs 4(a)(i)‑(iii) of the Policy require that the Complainant demonstrate to the Panel that:
(i) The disputed domain name 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 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
The Complainant has established rights in the HARTFORD Marks. The Panel agrees with the Complainant's assertions that the disputed domain name is a typo variation ("typosquatting") on the HARTFORD trademark, merely replacing the letter "t" of HARTFORD with a "d" and adding the descriptive term "investor" along with the ".com" generic Top-Level Domain ("gTLD").
The addition of the descriptive term "investor" is not sufficient to avoid confusion. Indeed, in the present case, given that the Complainant is a leading investment advisor company, which also promotes its services through the "www.hartfordinvestor.com" website, the use of the term "investor" in the disputed domain name is likely to increase confusion rather than decrease it.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the HARTFORD Marks in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.D below. In addition, the Respondent does not appear to be commonly known by the name "Hartford" or by similar names. Moreover, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant's trademark registrations and rights to the HARTFORD Mark when he registered the disputed domain name.
In fact, the Complainant's trademark is a fanciful name with no meaning. It has been registered and used for many decades and thus it long predates the disputed domain name's registration. Therefore, in the absence of evidence to the contrary, the Panel finds that the Respondent knew of the Complainant's trademark and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant's trademark at the time of the registration of the disputed domain name, with respect to the use of the disputed domain name.
The Panel notes that the disputed domain name displays a parking page, where pay-per-click advertisements and hyperlinks including some referring to services competing with those of the Complainant are displayed, and that this falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: "by using the 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."
Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent has never replied to the Complainant's cease and desist letter. Indeed, due to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name he would have responded.
Further inference of bad faith is given by the Respondent's use of the privacy protection service.
In fact, although privacy shields may be legitimate in some cases, here the use of a privacy service combined with non-reaction to a cease and desist letter and with the fact that Respondent has already been involved in many UDRP cases ruled against him, make it difficult to believe that the Respondent used the privacy shield for legitimate purposes and not to hide its identity in order to complicate and eventually frustrate the Complainant's attempts to protect and enforce its trademark rights.
Accordingly, the Panel finds on the basis of the evidence presented, 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 <hardfordinvestor.com> be transferred to the Complainant.
Date: January 22, 2016