WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lincoln National Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Mercedita Bautista, eName General Reseller and Fernando Veiga
Case No. D2019-0829
1. The Parties
The Complainant is Lincoln National Corporation, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Mercedita Bautista, eName General Reseller of Hong Kong, China and Fernando Veiga, Brazil (collectively referred to as “the Respondent”).
2. The Domain Names and Registrar
The disputed domain names <lincolnfacorp.com> and <lincolnfacorp.net> 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 11, 2019. On April 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 11, 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 17, 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 18, 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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on May 29, 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’s group has been supplying financial services since at least the 1960’s, including under the name “Lincoln Financial Advisors”.
The Complainant owns United States Trade mark No. 4226533 for a logo which includes the words “Lincoln Financial Advisors”, registered on October 16, 2012, in class 36.
The disputed domain name <lincolnfacorp.com> was registered on November 26, 2018, and the disputed domain name <lincolnfacorp.net> was registered on January 24, 2019.
The disputed domain name <lincolnfacorp.com> has been used for what purports to be a financial consultancy website branded “Lincoln Financial Advisors Corporation” and which included the Complainant’s actual address.
In January and February 2019, both disputed domain names were used for email addresses by a person pretending to be an employee of the Complainant.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain names are under common control.
The disputed domain names are identical or confusingly similar to the Complainant’s trade mark.
As a result of its use over many years, the Complainant’s trade mark has become a distinctive identifier that consumers associate with the Complainant’s services.
The Respondent’s abbreviation of the Complainant’s trade mark does not sufficiently distinguish the disputed domain names from the Complainant’s trade mark.
The Respondent’s addition of the generic and descriptive term “corp” actually increases the likelihood of confusing similarity as it denotes the Complainant’s business classification.
The disputed domain names are visually and phonetically similar to the Complainant’s trade mark.
The Complainant’s former use of the disputed domain names has also contributed to customer confusion.
The Respondent lacks rights or legitimate interests in the disputed domain names.
The Complainant has not authorised the Respondent to use the Complainant’s trade marks in the disputed domain names or otherwise.
The Respondent is not commonly known by the disputed domain names.
The Respondent’s use of the disputed domain names for a website impersonating the Complainant, clearly for nefarious purposes, as well as for apparent email spamming and phishing activities, cannot constitute rights or legitimate interests.
The above activities also constitute registration and use of the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.
A. Consolidation of Multiple Respondents
The principles governing the question of whether a complaint may be brought against multiple respondents are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Here, the Panel is satisfied that the disputed domain names are subject to common control, as they share certain contact details including the same registrant email address, and that, in the circumstances, consolidation is fair and equitable to all parties, and also procedurally efficient.
B. Identical or Confusingly Similar
The Complainant has established registered and unregistered rights in the mark “Lincoln Financial Advisors” .
As regards the Complainant’s figurative registered trade mark, section 1.10 of WIPO Overview 3.0 states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
Further, section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark is readily recognisable within the disputed domain names and, accordingly, the addition of the term “corp” does nothing to avert a finding of confusing similarity, as is the fact that “financial advisors” has been replaced with a common abbreviation for that term: “fa”.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to impersonate the Complainant in a fraudulent manner. Plainly, such use of the disputed domain names could not be said to be bona fide.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Complainant has produced evidence that the disputed domain names have been used for email addresses from which emails were sent to third parties impersonating the Complainant. The Respondent has also used at least one of the disputed domain names for a website impersonating the Complainant including use of a name similar to the Complainant’s trade mark as well as the Complainant’s correct address. Although the exact nature of the Respondent’s scheme is not clear, it is obvious that some sort of fraudulent activity is afoot. The fact of impersonation shows that the Respondent knew of the Complainant’s trade mark when registering the disputed domain names.
Given the evidence of use of the disputed domain names for a fraudulent purpose, the Panel readily concludes that they were registered and are being used in bad faith by the Respondent.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 names <lincolnfacorp.com> and <lincolnfacorp.net> be transferred to the Complainant.
Date: June 10, 2019