WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Factory Mutual Insurance Company v. Prof Man, Proff
Case No. D2021-0389
1. The Parties
The Complainant is Factory Mutual Insurance Company, United States of America (“United States”), represented by Markery Law LLC, United States.
The Respondent is Prof Man, Proff, Germany.
2. The Domain Name and Registrar
The disputed domain name <fmglobol.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2021. On February 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2021, 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 February 11, 2021 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 February 16, 2021.
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 February 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2021.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 19, 2021. 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 United States Corporation, which has been using its trademark FMGLOBAL in connection with property insurance services since at least 1999. These services are available to the public on a world-wide basis through the Internet.
It is the proprietor of several trademark registrations of its FMGLOBAL trademark, including United States registration numbers 2466979 and 3243237 registered on July 10, 2001 and May 22, 2007 respectively, and European Union registration numbers 001217686 and 004968111 registered on January 29, 2001 and April 11, 2007 respectively.
The disputed domain name was registered on January 27, 2021, and is currently not in use in connection with the offering of goods and/or services to the public.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its FMGLOBAL trademark, differing from the Complainant’s trademark by only a single letter.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Complainant has never granted permission to the Respondent to use its FMGLOBAL trademark in connection with a domain name, or otherwise.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith.
The Complainant has provided the Panel with evidence of the Respondent using the disputed domain name in connection with emails which disclose an attempt to divert monies due the Complainant, including impersonating an executive of the Complainant in the attempt.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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 Panel is satisfied from the information provided that the Complainant has sufficient rights in its FMGLOBAL trademark for the purposes of these proceedings, and that the FMGLOBAL trademark enjoys considerable common law rights arising from international trading.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top‑Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds.
The disputed domain name differs from the Complainant’s FMGLOBAL trademark by a single letter. The pronunciation of the Complainant’s FMGLOBAL and the disputed domain name <fmglobol.com>would, in the Panel’s opinion, be virtually identical. In the Panel’s opinion, the single letter difference is insufficient to prevent the Complainant’s trademark to be recognized by users familiar with the Complainant’s trademark, and confusion is likely to occur. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s FMGLOBAL trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.
Since the decision in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it has become well-established in prior decisions under the Policy that the mere lack of present use of a domain name found to have been registered in bad faith does not avoid a finding of bad faith use of a disputed domain name, if a complainant has a legitimate concern that any commencement of use of a disputed domain name would be likely to damage the complainant's interests as owner of a confusingly similar trademark. In the circumstances of the present case, the Panel considers that the evidence presented as to use of the disputed domain name in connection with emails, in an attempt to divert monies due to the Complainant, clearly demonstrates legitimate concern on behalf of the Complainant. Accordingly, the Panel finds that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <fmglobol.com> be transferred to the Complainant.
George R. F. Souter
Date: April 2, 2021