WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hartford Fire Insurance Company v. Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-3581

1. The Parties

The Complainant is Hartford Fire Insurance Company, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.

The Respondent is Domains by Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name (“Domain Name”) <thehartfordatwrok.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 27, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 November 1, 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 November 3, 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 12, 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 operates in the United States. It is a provider of life insurance, automobile and homeowners’ insurance, business insurance and reinsurance, group and employee benefits, and investment products. The Complainant provides insurance and financial services and products under the trademark THE HARTFORD, and is the registrant of the domain names <thehartford.com>, which it uses for its flagship website, and <thehartfordatwork.com>, which it uses for the website through which it offers direct enrollment and information to participating employees in its group and employee benefits plans.

The Complainant is the owner of the following trademark registrations for THE HARTFORD and THE HARTFORD AT WORK:
- the United States trademark THE HARTFORD with registration No.1,155,051, registered on May 19, 1981, for services in International Class 36;
- the European Union trademark THE HARTFORD with registration No.169078, registered on October 26, 1998, for services in International Class 36; and
- the United States trademark THE HARTFORD AT WORK with registration No. 3,213,180, registered on February 27, 2007, for services in International Class 36.

The disputed domain name was registered on September 17, 2021. It resolves to a parking webpage containing commercial links related to insurance, employee recruitment, and online courses.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it spends tens of millions of United States Dollars annually in advertising and promoting its trademarks THE HARTFORD and THE HARTFORD AT WORK and its products and services provided under these trademarks. According to it, as a result of its long and exclusive use, a significant investment of time, money, and effort over many years, and as a result of the quality of its products and services, the Complainant has gained substantial goodwill in these trademarks.

The Complainant submits that the disputed domain name is confusingly similar to the trademark THE HARTFORD which it incorporates entirely, and is virtually identical to the Complainant’s registered trademark THE HARTFORD AT WORK and to the Complainant’s domain name <thehartfordatwork.com>, other than juxtaposing the letters “o” and “r” in “work”, thus using the misspelling “wrok”. According to the Complainant, the addition of dictionary terms such as the misspelling of “work” does not alleviate the confusion between the disputed domain name and the Complainant’s trademark THE HARTFORD, but rather may reinforce the association of the trademark with the disputed domain name, and visitors to the Respondent’s website may falsely believe that it belongs to the Complainant.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s acquisition of the disputed domain name occurred after the Complainant had extensively used the trademarks THE HARTFORD and THE HARTFORD AT WORK and had registered them in the United States and elsewhere. The Respondent is not known by the disputed domain name, and there has never been any relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name incorporating the Complainant’s well-known trademark THE HARTFORD. The Complainant notes that the Respondent is a serial cybersquatter, having registered hundreds of infringing domain names.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. It points out that the Respondent acquired the disputed domain name which is a typosquatted version of the Complainant’s trademark THE HARTFORD long after the Complainant started using and registered this trademark, and has no connection with or authorization by the Complainant.

The Complainant submits that the website at the disputed domain name is a parked website with links to the Complainant’s competitors, and is listed for sale at the SEDO platform with a minimum offer of USD 899. According to the Complainant, the Respondent is thus using the disputed domain name to intentionally confuse consumers and to trade on the Complainant’s rights and reputation, and to sell the disputed domain name at a profit for its own commercial benefit. Given the reputation and renown of the Complainant’s trademarks THE HARTFORD and THE HARTFORD AT WORK, Internet users who search the Internet for legitimate information about the Complainant or about its group and employee benefits offerings under the trademark THE HARTFORD AT WORK are likely to immediately recognize the Complainant’s trademarks in it and assume that the disputed domain name and any website associated with it is associated with the Complainant.

The Complainant also notes that the Respondent is a serial cybersquatter, having lost dozens of previous UDRP disputes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”

The Respondent however did not submit a Response in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the trademarks THE HARTFORD and THE HARTFORD AT WORK, and has thus established his rights in these trademarks for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The disputed domain name incorporates the trademarks THE HARTFORD and THE HARTFORD AT WORK in their entirety, juxtaposing the letters “o” and “r”, so the word “work” is obviously misspelled as “wrok”. The two trademarks are easily recognizable in the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0. 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. See section 1.9 of the WIPO Overview 3.0.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the trademarks THE HARTFORD and THE HARTFORD AT WORK in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not known under the disputed domain name and the Complainant has not authorized it to use the trademarks THE HARTFORD and THE HARTFORD AT WORK, and that the Respondent is using the disputed domain name for a parking webpage containing links to competitors of the Complainant and has listed it for sale at the SEDO platform with a minimum offer of USD 899. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. The evidence in the case file shows that the disputed domain name indeed resolves to a parking webpage containing third party advertising links which may be competitors of the Complainant, and that the Respondent has offered it for sale for the amount indicated by the Complainant.

In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being well aware of the goodwill of the Complainant’s trademarks THE HARTFORD and THE HARTFORD AT WORK, has registered a typosquatted version of them as the disputed domain name in an attempt to exploit the trademarks’ goodwill to attract Internet users to the Respondent’s website and to the commercial advertising links on it, or to sell the disputed domain name for commercial gain. To the Panel, such conduct does not appear to be legitimate nor giving rise to rights or legitimate interests of the Respondents in the disputed domain name.

In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name is confusingly similar to the trademarks THE HARTFORD and THE HARTFORD AT WORK and represents a typosquatting version of them. The Respondent does not deny that it has used the disputed domain name for a website that contains links to competitors of the Complainant and has offered it for sale for a significant amount.

Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the trademarks THE HARTFORD and THE HARTFORD AT WORK in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the trademarks THE HARTFORD and THE HARTFORD AT WORK as to the affiliation of its website and of the commercial links on it, or to sell the disputed domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

7. Decision

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 <thehartfordatwrok.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: December 22, 2021