WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. WhoisGuard, Inc. / Onofeghara Wisdom, Onofegharawisdom Company lmt
Case No. D2019-0748
1. The Parties
The Complainant is Nationwide Mutual Insurance Company of Columbus, Ohio, United States of America, represented by Dinsmore & Shohl LLP, United States of America (“US”).
The Respondent is WhoisGuard, Inc. of Panama, Panama / Onofeghara Wisdom, Onofegharawisdom Company lmt of Warri, Nigeria1.
2. The Domain Names and Registrar
The disputed domain names <nationwidebnk.online>, <nationwidesbnk.com> and <nationwidesbnk.online> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2019 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 April 9, 2019.
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 April 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2019.
The Center appointed Adam Samuel as the sole panelist in this matter on May 17, 2019. 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 US insurance and financial services company. It promotes this through the domain name <nationwide.com>, registered on March 3, 1994. The Complainant owns a US trademark NATIONWIDE, registration number 854888, registered on August 13, 1968 and a US trademark NATIONWIDE BANK, registration number 3308449, registered on October 9, 2007.
The disputed domain names <nationwidebnk.online>, <nationwidesbnk.com> and <nationwidesbnk.online> were registered by the Respondent on August 20, 2018, March 22, 2019 and March 28, 2019 respectively. The disputed domain names <nationwidebnk.online> and <nationwidesbnk.com> resolved to a page, stating “If you are the owner of this website, please contact your hosting provider. The disputed domain name <nationwidesbnk.online> resolves to a website offering insurance services using the Complainant’s name. This was also the case for the other two disputed domain names when the Complaint was filed.
5. Parties’ Contentions
Since 1955, the Complainant has used the trademark NATIONWIDE in connection with insurance and financial services. The disputed domain names incorporate the Complainant’s NATIONWIDE and NATIONWIDE BANK trademarks in their entireties, save for an intentional misspelling of the words bank and the inclusion of the letter “s” in two of the three disputed domain names. The intentional omission of the letter “a” from all three disputed domain names and the addition of “s” in the second and third disputed domain name does not significantly affect the appearance or pronunciation of the Complainant’s registered trademarks in the disputed domain name. This typosquatting has created virtually identical and confusingly similar marks to the Complainant’s trademarks.
The Complainant has not discovered any rights or legitimate interests that the Respondent has in the disputed domain names. The Complainant has no relationship with the Respondent and has not given the Respondent permission to use its trademarks or to apply for any domain names. The fact that the website content of each of the disputed domain names is/was an exact replica of the Complainant’s website makes it an illegitimate offering of services. The domain name registrant has no rights or legitimate interests in the disputed domain names.
The wholesale copying of the contents of the Complainant’s website and the use of a privacy protection service in the registration of the disputed domain names to conceal the Respondent’s identity are both evidence of bad faith. The first point demonstrates that the Respondent knew of the Complainant and the Complainant’s trademarks when the disputed domain names were registered and that the Respondent is intentionally attempting to attract users to its websites by creating a likelihood of confusion with the Complainants marks as to the source, sponsorship, affiliation or endorsement of the websites. The Respondent has also provided a non-existent address to the disputed domain names’ Registrar.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed as regards each disputed domain name, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
Each disputed domain name consists of the Complainant’s NATIONWIDE BANK trademark with an “a” omitted and in the case of the second and third disputed domain name, an “s” inserted before the “b”. There is also added to each disputed domain name a generic Top-Level Domain (“gTLD”). The gTLDs are irrelevant here because they are a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Without them, one is left with three marginally misspelt versions of the Complainant’s trademark NATIONWIDE BANK. Section 1.9 of the WIPO Overview 3.0 reads:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.”
The omission from all three disputed domain names of a vowel from the word “bank” to produce an abbreviation often used for the term “bank” and the insertion of the “s” in the second and third disputed name come within the scope of a “common, obvious or intentional misspelling of a trademark”.
For these reasons, the Panel concludes all three disputed domain names are confusingly similar to the Complainant’s NATIONWIDE BANK trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Nationwide Bank” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of each of the disputed domain names.
C. Registered and Used in Bad Faith
The Respondent’s use of a replica of the Complainant’s own website on all three of the disputed domain names shows that the Respondent knew when it registered the disputed domain names, of the Complainant and its activities and set out to use its trademark to provide a service that competes with the Complainant. The Respondent is continuing to do this with respect to the third disputed domain name.
It is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain names other than to attract business or Internet users to its site who were looking for a site connected to the Complainant’s trademark or business. The Respondent’s motive in registering and using the disputed domain names is either to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith: paragraph 4(b)(i), (ii) and (iii) of the Policy.
For these reasons alone the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith. It is unnecessary in the circumstances to deal with the other matters raised by the Complaint.
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 names <nationwidebnk.online>, <nationwidesbnk.com> and <nationwidesbnk.online> be transferred to the Complainant.
Date: May 20, 2019
1 The Panel notes that the Complaint was originally submitted against Namecheap, Inc, which is the Registrar of the disputed domain names. Noting that the Registrar has disclosed the underlying registrant, the Panel considers that there is no purpose in keeping the Registrar as the Respondent in this proceeding.