WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hartford Fire Insurance Company v. Patrick Taiwo, The Hartford
Case No. D2021-3302
1. The Parties
Complainant is Hartford Fire Insurance Company, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Patrick Taiwo, The Hartford, United States.
2. The Domain Name and Registrar
The disputed domain name <thehartfordgrp.com> 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 October 6, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 Complainant on October 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 13, 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 Respondent of the Complaint, and the proceedings commenced on October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on November 8, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on December 3, 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
Complainant is one of the largest insurance and financial services businesses in the United States. It is the proprietor of numerous registrations for its HARTFORD marks, including the following:
- United States Registration No. 1155051 for THE HARTFORD (word mark), registered on May 19, 1981 for services in class 36, claiming a date of first use in 1971;
- United States Registration No. 2153863 for HARTFORD (word mark), registered on April 28, 1998 for services in class 36, claiming a date of first use in August 1982;
- United States Registration No. 2408978 for THE HARTFORD GROUP (word mark), registered on November 28, 2000 for services in class 36.
Complainant operates its primary business at the domain name <thehartford.com>.
The disputed domain name was registered on September 17, 2021. At the time of this Decision, it resolved to a website featuring pay-per-click links. The record contains evidence that it previously resolved to a website offering insurance services to consumers. The website displayed the mark and trade dress of Complainant.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it was founded in 1810 and is a leading provider of life insurance, automobile and homeowners insurance, business insurance and reinsurance, group and employee benefits, and investment products. It has for many years done business under the marks HARTFORD, THE HARTFORD, and THE HARTFORD GROUP. It has invested significant resources in promoting its marks. The disputed domain name incorporates Complainant’s HARTFORD marks in their entirety, merely adding “grp”, which is a shortened version of the term “group” and does not distinguish the disputed domain name from Complainant’s marks.
Under the second element, Complainant states that the disputed domain name was registered after Complainant had established rights in the HARTFORD marks. There is no relationship between the parties and Complainant has not authorized Respondent to register or use any domain name incorporating Complainant’s well-known HARTFORD marks. The disputed domain name resolves to a website that reproduces, in detail, Complainant’s website.
Under the third element, Complainant states that Respondent has painstakingly copied every aspect of the pages on Complainant’s website, including Complainant’s THE HARTFORD mark and logo. Respondent was clearly aware of Complainant’s marks and intended to unfairly trade on theme by registering and using the disputed domain name. The HARTFORD marks have been used for many years, are extensively advertised, and are among the most recognized marks in the insurance and financial services industry. It is inconceivable that Respondent was unaware of Complainant when registering the disputed domain name. Respondent failed to respond to Complainant’s correspondence via the Internet Service Provider requesting that Respondent terminate the website. Respondent provided false Whois contact information, listing Complainant’s trade name and location as its own. Finally, Respondent has configured email servers for the disputed domain name. Respondent registered and is using the disputed domain name in bad faith.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the marks HARTFORD, THE HARTFORD, and THE HARTFORD GROUP through registration in the United States and elsewhere. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name consists of Complainant’s mark THE HARTFORD followed by the letters “grp.” It is the consensus view of UDRP panels that where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8.
It is the well-established view of UDRP panels that a generic Top-Level Domain (“gTLD”) such as “.com” is viewed as a standard registration requirement and as such may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the HARTFORD marks with the permission of Complainant. The nature of the disputed domain name, which reflects Complainant’s mark, cannot constitute fair use since it suggests sponsorship or endorsement by the trademark owner. See, for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909; B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna, WIPO Case No. D2020-2837. See also WIPO Overview 3.0, section 2.5.1.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in not responding to Complainant’s contentions, has not submitted any evidence or arguments demonstrating rights or legitimate interests, nor has it rebutted Complainant’s prima facie case. The circumstances of the case prevent the inference of rights nor legitimate interests on the part of Respondent. While the Panel does note that the record of registration for the disputed domain name lists the Registrant Organization as “The Hartford”, the Panel finds that there is no evidence that Respondent is actually commonly known by the disputed domain name or “The Hartford”. Rather the choice of registration details appears intended to impersonate the Complainant and legitimize the Respondent’s attempt to pass itself off as the Complainant. In this regard, the record reflects that the disputed domain name redirected to a site that mirrored Complainant’s website. Respondent has clearly selected the disputed domain name to attract Internet users to its website, thereby misappropriating the goodwill associated with Complainant’s mark and misleadingly diverting consumers. Such use cannot establish rights or legitimate interests.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration of the disputed domain name. Complainant’s rights in its HARTFORD, THE HARTFORD, and THE HARTFORD GROUP marks significantly predate the registration of the disputed domain name. Complainant’s THE HARTFORD mark is clearly visible in the disputed domain name.
Turning to use of the disputed domain name, the Panel finds that Complainant has demonstrated Respondent’s bad faith. The disputed domain name resolved to a website that mimicked Complainant’s own website, including use of Complainant’s logo and trade dress. On this website, Respondent invited visitors to submit personal data, which clearly indicates a fraudulent phishing scheme. After being disabled by the Registrar, the website resolved to a website featuring pay-per-click links connected to insurance services. All these factors manifestly indicate opportunistic bad faith registration and use of the disputed domain name. By impersonating Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. See WIPO Overview 3.1.4 and cases cited thereunder.
The Panel therefore finds that Complainant has established the third element under 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 name <thehartfordgrp.com> be transferred to Complainant.
Date: December 17, 2021