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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Indemnity Company v. Privacy Administrator, Anonymize, Inc. / Loony Foodies

Case No. DCO2020-0080

1. The Parties

The Complainant is National Indemnity Company, United States of America (“United States”), represented by Iverson IP, United States.

The Respondent is Privacy Administrator, Anonymize, Inc., United States / Loony Foodies, India.

2. The Domain Name and Registrar

The disputed domain name <nationalindemnity.co> is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2020, 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 18, 2020 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 23, 2020.

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 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. Further to an extension request, the due date for Response was extended until December 26, 2020. The Respondent did not submit a formal Response, although it sent a further email to the Center on December 28, 2020. Accordingly, the Center notified the commencement of Panel Appointment on December 29, 2020.
The Center appointed Steven A. Maier as the sole panelist in this matter on January 29, 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 an insurance company headquartered in Nebraska, United States.

The Complainant is the owner of United States trademark number 6011323 for the word mark NATIONAL INDEMNITY COMPANY, registered on March 17, 2020 for insurance underwriting in International Class 36. The trademark certificate records the date of first use in commerce as November 30, 1946.

The disputed domain name was registered on April 30, 2020.

The Complainant has submitted evidence that the disputed domain name has resolved to a website at “www.nationalindemnity.co” which contained links to a variety of insurance-related services.

The Complainant has submitted further evidence that the disputed domain name has been offered for sale via the Registrar at an asking price of USD 4,495.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has used the name and mark NATIONAL INDEMNITY COMPANY in commerce since 1946. It states that it has “spent substantial sums of money displaying, promoting and advertising the NATIONAL INDEMNITY COMPANY mark,” and that “Complainant’s mark is distinctive and well known in the insurance underwriting industry, as evidenced by the number of years of use.” The Complainant also refers to its registration of numerous domain names including <nationalindemnity.com>, <nationalindemnity.net> and <nationalindemnity.org>. However, the Complainant does not exhibit any specific evidence of the nature or scale of its business activities or of the public awareness or reputation of its NATIONAL INDEMNITY COMPANY trademark.

The Complainant submits that the disputed domain name is identical to part of the Complainant’s trademark NATIONAL INDEMNITY COMPANY, and is therefore both identical and confusingly similar to a trademark in which the Complainant has rights.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its NATIONAL INDEMNITY COMPANY trademark in connection with any website, that the Respondent has not commonly been known by the disputed domain name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant contends that instead, the Respondent is using a name that is confusingly similar to the Complainant’s trademark in order unfairly to benefit from advertising revenues.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent must have known of the Complainant’s NATIONAL INDEMNITY COMPANY trademark owing to the amount of money spent on promoting that trademark and the Complainant’s presence in the insurance underwriting sector. The Complainant submits that the registration of a domain name corresponding to a well-known trademark is of itself opportunistic bad faith.

The Complainant further contends that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. Specifically, the Complainant says that the Respondent is using the Complainant’s trademark NATIONAL INDEMNITY COMPANY purely to drive traffic to its advertising website and that the links on that website may include links to the Complainant’s competitors.

The Complainant also refers to the Respondent’s offer to sell the disputed domain name for sale for USD 4,495 and points to a link on the Respondent’s website which states: “Want nationalindemnity.co? Click here for more.” The Complainant submits that the Respondent has thereby demonstrated its intention to sell the disputed domain name for a sum substantially in excess of its legitimate costs of registration, which is a further indication of the Respondent’s bad faith.

The Complainant requests a transfer of the disputed domain name.

B. Respondent

The Respondent did not file a formal Response to the Complaint. In an email to the Center dated December 9, 2020 the Respondent requested an extension of time to file a Response, which extension was granted by the Center for a period of 10 additional days. In its email dated December 28, 2020 the Respondent requested a further extension and blamed the Covid-19 pandemic for preventing it from obtaining legal advice. The Respondent stated: “If the center can’t do that, we agree to transfer the domain to the complainant as it is practically impossible to get legal help because of the reasons I have mentioned above.” None of the communications received from the Respondent included any substantive response whatsoever to the Complainant’s submissions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of a registered trademark for NATIONAL INDEMNITY COMPANY. The disputed domain name <nationalindemnity.co> wholly incorporates the first two elements of that trademark and in the view of the Panel the absence of the dictionary word “company” does not avoid confusing similarity as between the disputed domain name and the Complainant’s trademark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Complainant has met its burden on the second element.

C. Registered and Used in Bad Faith

In order to establish bad faith, it is incumbent upon a complainant to prove, at least by inference, that the respondent was aware of its trademark at the date of registration of the disputed domain name and did not register the disputed domain name purely coincidentally. Such inference may in appropriate cases be drawn from the distinctive nature of the trademark and/or from the complainant’s evidence of the reputation of the trademark, such that it is more likely than not to have come to the attention of the respondent.

In this case, the relevant trademark NATIONAL INDEMNITY COMPANY comprises three dictionary terms, which in the Panel’s view are descriptive of a corporation providing insurance services, possibly within a particular country. The Panel does not therefore find the Complainant’s trademark to be inherently highly distinctive. Further, the Complainant’s case is somewhat deficient, in that it makes conclusory assertions about its investment in promoting the trademark and its reputation in the insurance industry, but without providing any specific evidence in support of those statements. Contrary to the Complainant’s submissions, a trademark is neither distinctive nor well-known merely because it has been in existence for a long period of time.

Against this, the Panel weighs the fact that the disputed domain name, <nationalindemnity.co>, includes the country code Top-Level Domain (“ccTLD”) “.co”. While this country code designates Colombia, it is also a common abbreviation for the term “company” and in the view of the Panel its inclusion in this case adds significantly to the similarity between the disputed domain name and the Complainant’s complete trademark. (While a ccTLD is to be disregarded for the purpose of comparison under paragraph 4(a)(i) of the Policy, it is nevertheless legitimate to consider it in connection with the issue of bad faith under paragraph 4(a)(iii).)

The Panel further observes that the disputed domain name was registered in April 2020, the month after the Complainant obtained a trademark registration for its long-established mark NATIONAL INDEMNITY COMPANY, which had previously been unregistered.

Thirdly, the Panel considers it significant that, despite having had every opportunity to reply to the Complaint and having been in email communication with the Center, the Respondent has failed to answer any of the Complainant’s contentions in this proceeding. While it may well have encountered difficulties in obtaining legal advice, the Panel can see no reason why the Respondent could not have provided a response, even if an informal one, disputing the Complainant’s submissions, had it wished to do so, and explaining any legitimate reasons for its registration and use of the disputed domain name.

In all the circumstances, and taking also into account the fact that the Respondent has no apparent rights or legitimate interests in respect of the disputed domain name, and has used it only for the purpose of a website containing pay-per-click links and an offer to sell the disputed domain name for a significant sum, the Panel is drawn to the conclusion, on balance, that the Respondent is more likely than not to have been aware of the Complainant’s trademark and to have registered the disputed domain name in the knowledge of that trademark and with the intention of taking unfair advantage of it.

The Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a website which offers links to providers of insurance services which may include the Complainant’s competitors. In the light of the Panel’s conclusions concerning the Respondent’s reasons for registering the disputed domain name, it follows that the Respondent has used the disputed domain name in an attempt to impersonate the Complainant at the level of the disputed domain name itself and misleadingly to attract Internet traffic intended for the Complainant to its own website. The Panel therefore finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Panel also finds the Respondent’s offer to sell the disputed domain name for USD 4,495 to be a further indication of its bad faith. While the sale of domain names is not inherently illegitimate, and the price could in theory be argued to reflect the somewhat descriptive nature of the disputed domain name (though the Respondent has not done so), an offer of this nature cannot be legitimate where the Respondent has deliberately targeted the Complainant’s trademark, which the Respondent has not disputed and which the Panel has found to be the case in this instance. The Panel also observes that a domain name such as “national indemnity” while comprising dictionary words makes little sense as combined (moreover with the “.co – company” appendage) if not in reference to services such as the Complainant’s.

The Panel therefore concludes that the disputed domain name has been registered and is being 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, <nationalindemnity.co>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: February 12, 2021

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