WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Insurance Australia Group Limited v. Private Registration AU / Daniel Nerezov, Drive Happy Accident Management Pty Ltd
Case No. D2019-0650
1. The Parties
The Complainant is Insurance Australia Group Limited of New South Wales, Australia, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Private Registration AU of Victoria, Australia / Daniel Nerezov, Drive Happy Accident Management Pty Ltd, of Sydney, Australia.
2. The Domain Names and Registrar
The disputed domain names <cgu.claims> and <nrma.claims> are registered with Melbourne IT Ltd Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 27, 2019, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain names;
(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint;
(c) the Respondent registered the disputed domain names on, respectively, August 15 and 20, 2018;
(d) confirming the language of the registration agreements is English;
(e) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain names.
The Center sent an email communication to the Complainant on April 2, 2019, 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 April 3, 2019.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Policy, 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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 3, 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
The Complainant is a multinational insurance company headquartered in Sydney, Australia. It offers insurance under a number of brands, including NRMA and CGU. The “NRMA” arm of the business traces its roots back to the 1920s. The “CGU” arm can trace its insurance business back some 160 years.
In 2000, the National Roads and Motorists Association demutualized to form the NRMA Insurance business. In 2002, the Complainant changed its name from NRMA Insurance Group Limited to its current name. The Complainant’s “NRMA” business provides car insurance, motorcycle insurance, home insurance, business insurance, travel insurance, boat insurance, caravan insurance, life insurance, income protection and security in Australia. Its website “www.nrma.com.au” had almost 956,000 visitors in the six months from August 2018 to January 2019. Its Facebook page, @nrmainsurance, has 77,000 followers and its Twitter page has more than 2,000 followers.
The Complainant’s “CGU” business was formed by the merger of Commercial Union plc and General Accident plc. The Complainant acquired the merged business in 2003. It provides commercial, rural and personal insurance and is one of the top providers of workers compensation insurance. The Complainant’s website at “www.cgu.com.au” had some 67,000 visitors in the six months from August 2018 to January 2019. Under the CGU brand, the Complainant provides insurance to nearly 500,000 properties, over one million motor vehicles, more than 125,000 businesses and some 60,000 farms. Its Facebook page, @cguinsurance has more than 6,000 followers and its Twitter page has more than 4,000 followers.
The Complainant has provided evidence of numerous registered trademarks. For present purposes, it is sufficient to note only:
(a) Australian Registered Trademarks Nos. 332018, 332019 and 332020 for NRMA in, respectively, International Classes 36, 37 and 42 and which have been registered since April 26, 1979; and
(b) Australian Registered Trademark No. 760701 for CGU, for a wide range of services in International Classes 35, 36 and 42 and which has been registered from April 27, 1998.
As noted above, the disputed domain names <nrma.claims> and <cgu.claims> were registered in August 15, 2018, and August 20, 2018, respectively.
The disputed domain name <nrma.claims> resolves to a website “Motor Claims Online”. Amongst other things, the website displays the message “Call 1800 319 409 to report your NRMA claim”, with a picture of a call center telephonist.
The disputed domain name <cgu.claims> does not resolve to an active website and appears to have been inactive since its registration.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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 first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Panel finds that the Complainant has trademark rights on NRMA and CGU through registration and use.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (“TLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
Disregarding the TLD “.claims”, the two disputed domain names <nrma.claims> and <cgu.claims> are identical to the Complainant’s trademarks for, respectively, NRMA and CGU.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use either of the disputed domain names. Nor is the Respondent affiliated with the Complainant in any way. Neither disputed domain name is derived from the Respondent’s name and, from the available record, the Respondent does not appear to hold any trademarks for the disputed domain names. Further, both disputed domain names were registered long after the Complainant’s rights in its trademarks had accrued, both by registration and use.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain names.
In the case of the disputed domain name, <nrma.claims>, that prima facie case is further strengthened because the disputed domain name resolves to a web-page which directs people to call a telephone number of Motor Accident Group. If that number is called, it is answered by someone purporting to be the claims page for Motor Accident Group. On the transcript of a call in the record, the person answering the call did say that he was unable to assist a person calling to make a claim on their NRMA insurance. The Complainant contends the website is being operated as a phishing exercise to collect private information about customers. Even if that is not the case, the use of someone’s trademark in this fashion does not qualify as use in good faith under the Policy.
The basis on which the Respondent has adopted the disputed domain names, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It is very unlikely that someone located in Australia, as the Respondent is, would be unaware of the NRMA or, for that matter, CGU. There can be little doubt of that in this case as the Respondent uses the disputed domain name <nrma.claims> in connection with a claims page for “Motor Accident Group”.
Accordingly, the Panel has no hesitation in finding that the Respondent registered the disputed domain names with knowledge that they were confusingly similar with the Complainant’s trademarks and did so to take advantage of their trademark significance.
The use which is being made of the disputed domain name, <nrma.claims>, has been described above and, as already noted, does not qualify as use in good faith under the Policy.
Further, the TLD “.claims” is apparently an open domain extension with no restrictions on who may register a name in this TLD. However, it is promoted as “[t]he new solution for online insurance claims” by enabling insurance companies to create a “memorable claims-specific page”.
In the circumstances and having regard to the fame of the CGU mark in Australia and the promotion of the TLD “.claims” for use in connection with insurance claims services, the Panel considers this is an appropriate case to apply the principle from Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, that mere passive holding of a domain name constitutes use in bad faith.
Accordingly, the Complainants have established all three requirements under 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 names <cgu.claims> and <nrma.claims> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 18, 2019