WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trustmark Insurance Company v. Lola Parsons
Case No. D2019-1748
1. The Parties
Complainant is Trustmark Insurance Company, United States of America (“United States”), represented by Fox Rothschild LLP, United States.
Respondent is Lola Parsons, United States.
2. The Domain Name and Registrar
The disputed domain name <trustmarklifeandhealth.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 14, 2019.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 26, 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
Complainant owns the trademark TRUSTMARK, as well as trademarks for TRUSTMARK GROUP INSURANCE, TRUSTMARK VOLUNTARY BENEFIT SOLUTIONS and TRUSTMARK CRITICAL LIFEEVENTS, all used for underwriting, brokerage, and administration of insurance and benefit plans in the fields of life, health, accident, medical, mental health and substance abuse, disability, prescription drug coverage, dental and critical illness. Complainant has been using its TRUSTMARK mark since 1986 and owns United States Trademark Registration Nos. 1,427,794, registered on February 3, 1987; 3,054,133, registered on January 31, 2006; 3,047,592, registered on January 24, 2006; and 4,736,654, registered on May 12, 2015.
The Domain Name was registered on February 10, 2019. The Domain Name has been used to offer competing healthcare and life insurance services.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that it owns the TRUSTMARK trademark and has been using it since 1986. Complainant claims that Respondent is marketing and providing life and health insurance using the “trustmark” term, as well as using it in connection with the Domain Name. This term is identical to Complainant’s TRUSTMARK mark, while the respective insurance services offered by Complainant and Respondent are also identical. Complainant contends that this is a clear indication that Respondent’s use of the term is confusingly similar to Complainant’s TRUSTMARK mark.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent registered the Domain Name in February 2019. Complainant has been using its incontestable trademark, TRUSTMARK, in connection with its underwriting, brokerage, and administration of insurance and benefits plans since at least as early as 1986, with United States Trademark Registrations dating back to February 1987. Complainant has clear priority with respect to use of the term “trustmark” in connection with insurance and benefits services.
(iii) Registered and used in bad faith
Complainant states that by registering the Domain Name, which includes the distinctive term “trustmark”. Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s insurance services advertised on Respondent’s site. Complainant contends that Respondent intended to divert traffic from Complainant’s website at “www.trustmarkinsurance.com” and attract those users to Respondent’s Domain Name for commercial gain. Further, by registering and using Domain Name, Respondent intended to disrupt Complainant’s business. Thus, Complainant believes that this is a bad faith registration and use of the Domain Name under the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its long-established TRUSTMARK trademark, based on its trademark registrations and use of the mark in the United States.
Further, the Panel determines that the Domain Name is confusingly similar to the TRUSTMARK mark, as the Domain Name incorporates the mark in its entirety, while adding the phrase “life and health” (with no spaces), which refers to two of the areas where Complainant offers its insurance services. The addition of this phrase does not prevent a finding of confusing similarity. See e.g., Accenture Global Services Limited v. Name Redacted, WIPO Case No. D2018-1038 (UDRP Panel found that “investments” was a generic designation in the disputed domain name <accentureinvestments.com> and that “the addition of such a generic designation does not serve sufficiently to distinguish the disputed domain name from the Complainant’s mark”).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. While Respondent registered the Domain Name in February 2019, Complainant has been using its TRUSTMARK mark in connection with its healthcare insurance services since 1986, while holding registered trademarks dating from 1987. There is no evidence that Respondent has been authorized to use Complainant’s TRUSTMARK mark. Nor has Respondent used the Domain Name for a legitimate noncommercial or fair use, noting Respondent’s website / the Domain Name has been used to offer competing healthcare and life insurance services in a manner that is likely to cause consumer confusion, so that consumers are likely to believe that the services provided by Respondent are authorized or endorsed by, or otherwise affiliated with, Complainant. This type of use by Respondent does not give rise to any rights or legitimate interests in the Domain Name. In addition, the Panel finds that the Domain Name carries a risk of implied affiliation.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. The Panel observes that by the time Respondent registered the Domain Name in February 2019 – choosing a domain name that incorporates Complainant’s TRUSTMARK trademark in its entirety, followed by the phrase “life and health”– Complainant had been using its TRUSTMARK mark for over 30 years in the same field for the same services as those offered by Respondent: health and life insurance. The Domain Name is so obviously connected with Complainant’s mark that the Panel considers the only logical conclusion is that Respondent was aware of Complainant and its TRUSTMARK mark when registering the Domain Name. See e.g., Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark was known and vested with significant goodwill). A simple search by Respondent would have identified Complainant and its trademarks.
Further, the use of the Domain Name by Respondent operates to attract consumers, for commercial gain, by incorporating Complainant’s TRUSTMARK mark in the Domain Name, thereby capitalizing on Complainant’s good will in its mark and creating a likelihood of confusion with the mark. Consumers could easily assume that Respondent’s services are authorized, endorsed, licensed, or otherwise approved by Complainant. See e.g., Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith”).
In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Domain Name, <trustmarklifeandhealth.com>, be transferred to Complainant.
Christopher S. Gibson
Date: September 22, 2019