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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. DotaCom Corporation
1. The Parties
The Complainant is Nationwide Mutual Insurance Company, Columbus, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondent is DotaCom Corporation, Illinois, United States of America represented
by Jason Soldat (Managing Director), WebContents, Inc, Illinois, United States
2. The Domain Name and Registrar
The disputed domain name, <nationwidefinancialsolutions.com>, is registered
with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2007. On February 8, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 8, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2007. The Response was filed with the Center on February 15, 2007.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 9, 2007. 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.
A Supplemental filing was submitted by the Complainant
on March 9, 2007. No provision is made under the Policy for supplemental filings
by either party. However, the Panel may, in its discretion, decide to submit
and consider a supplemental filing in rendering a decision. The Panel has taken
in to account the Complainant’s supplemental filing here.
4. Factual Background
The Complainant is a large, widely-known American company engaged in the insurance and financial services industry. It owns, among other related trademarks, United States trademark registrations for the marks “Nationwide” (Registration No. 854,888; August 13, 1968) and NATIONWIDE FINANCIAL (Registration No. 2,788,512; December 2, 2003), mainly for insurance underwriting and financial services in international class 036. The Complainant has used the NATIONWIDE trademark in commerce for more than 50 years.
The Respondent is listed as the registrant of the
disputed domain name <nationwidefinancialsolutions.com> and the record
of registration was created on July 28, 2003. The Respondent uses the name for
a website that contains links to the websites of third party competitors of
5. Parties’ Contentions
The Complainant, Nationwide Mutual Insurance Company, was founded (under the name Farm Bureau Mutual Automobile Insurance Company) in 1926, in Columbus, Ohio, United States of America. Its initial business was automobile insurance, but over the succeeding 80 years the Complainant has branched out into many other forms of insurance and financial services.
In connection with its various services, the Complainant owns a United States trademark in the word NATIONWIDE (Registration No. 854,888; August 13, 1968) as well as the related marks of NATIONWIDE FINANCIAL (Registration No. 2,788,512; December 2, 2003) and NATIONWIDE FINANCIAL SERVICES (Registration No. 1,955,871; February 13, 1996).
Using its NATIONWIDE mark continuously from 1955, the Complainant currently has more than 8,000 exclusive authorized agents and more than 160,000 non-exclusive registered representatives who sell its products, including various insurance and financial services, throughout the United States of America.
The Complainant maintains strict control over the use of its marks by its authorized agents and registered representatives, and has advertised extensively in the United States for more than 50 years in print media, on radio and television and through sponsorship of public events (in excess of $240 million USD has been spent since 1998).
The Complainant is currently 91st on the Fortune 500 list, and 297th on the Global 500 listing, its mark having become associated solely and exclusively in the minds of consumers with quality insurance and financial services provided by the Complainant.
The Complainant owns and conducts business under <nationwide.com> and <nationwidefinancial.com> among other related domain names.
After learning recently that the Respondent had registered the disputed domain name, the Complainant sent the Respondent a letter on November 17, 2006, demanding a transfer of the domain name to the Complainant. Receiving no response, the Complainant sent a follow-up letter and e-mail on November 28, 2006. Again, there was no response.
The Respondent registered the disputed domain name in an effort to capitalize on the recognition of the Complainant’s well-established mark, hoping to lure Internet browsers to a site which ostensibly offers the Complainant’s products and services but in reality does not.
The Respondent uses the disputed domain name to make money through a website which links Internet customers to third-party sites offering financial and/or insurance services directly competitive with the Complainant’s businesses.
By attempting to capture Internet users who are seeking the Complainant’s services, the Respondent is using the disputed domain name to intentionally attract, for commercial gain, those users to a website by creating confusion with the Complainant’s mark. This is evidence of bad faith registration and use under the Policy, paragraph 4(b)(iv).
The Respondent has no legitimate interest in the disputed domain name. The Respondent is not a licensee of the Complainant, nor does the Respondent’s name contain the word “Nationwide.” The Respondent’s use of this domain name to direct traffic to competitive products and services for profit is not a legitimate or bona fide use.
The disputed domain name is confusingly similar to the Complainant’s mark despite the addition of the merely descriptive word, “solutions.”
As is clear from the Respondent’s own website, the Respondent is in the business of selling domain names, not in the business of providing information on financial and insurance services.
The Respondent engages only in the bad faith registration and use of domain names that contain the trademarks of third parties, and this is not the first time the Respondent has had a UDRP proceeding brought against it. This dispute is similar to those cases in which it was found that the Respondent lacked legitimate interests in and made bad faith registration and use of a domain name.
The Respondent registered the disputed domain name long after the Complainant’s marks had become famous, and long after the Respondent knew of the Complainant’s superior and prior rights – actions and knowledge which demonstrate bad faith.
The Complainant’s registration of the NATIONWIDE marks includes a specific waiver of rights in those marks where the stylistic design is not used.
The disputed domain name is identical to the Complainant’s marks for purposes of these proceedings.
The Respondent has not registered or used the disputed domain name in bad faith. Specifically, none of the criteria employed as evidence of bad faith as listed in Policy Paragraph 4(b) apply to this case. The Respondent did not offer to sell the name to the Complainant, the Complainant is not blocked from registering any number of similar names to conduct its business, and the Respondent is not a business competitor of the Complainant.
The Respondent is making a fair, commercial use of the disputed domain name, and the Complainant has not attempted to gain a transfer of similar domain names ending with the gTLDs “.net” and “.biz”.
The Respondent operates more than 28,000 generic domain properties including generic, top-tiered non-infringing domain properties. It possesses a legitimate interest in the disputed domain name and has invested a great deal of time, energy and resources into financial-related domain name properties.
The Complainant has attempted to reverse hijack other domain names under prior UDRP proceedings, but has failed because panels in those cases have ruled against transfer of rights to the Complainant. The Complainant is clearly abusing the UDRP proceedings
The Respondent acquired the disputed domain name from its previously respected registrant, Nationwide Financial Solutions, Inc in the first week of September 2006. Nationwide Financial Solutions, Inc is not and has never been associated with the Complainant. Nationwide Financial Solutions, Inc held a United States trademark/service mark (Registration No. 78458464) for use of their exact name, NATIONWIDE FINANCIAL SOLUTIONS. It, however, abandoned the mark as of April 4, 2006, long before the Respondent’s acquisition of the disputed domain name.
The abandonment of the mark corresponding to the disputed domain name by the previous organization proves that the Complainant maintains no rights in this name going forward. This proceeding is clearly a futile attempt at reverse domain name hijacking of the domain name from the Respondent’s ownership and possession.
C. Complainant’s Supplemental Contentions
The Complainant has made no disclaimers in its trademark registrations with respect to “Nationwide” or any related mark.
As the Respondent’s entire business is the registration and marketing of domain names, the Respondent’s allegation that it has not attempted to sell the disputed domain name is not credible.
The company, Nationwide Financial Solutions, Inc., only applied for but never received a trademark registration corresponding to the disputed domain name. The Complainant would have opposed that trademark had it been granted, as the Complainant has acted aggressively to protect its various marks, including filing several complaints under the Policy.
The Complainant does not contest the right of the Respondent to sell generic domain names, but the disputed domain name is not generic since it copies the Complainant’s trademark.
A prior WIPO UDRP case cited by the Respondent in
its defense is inapplicable because in that earlier case the respondent had
valid claims in the United Kingdom to the mark NATIONWIDE. The Respondent does
not possess any similar claim.
6. Discussion and Findings
In order for the Complainant to prevail in this administrative proceeding pursuant to paragraphs 4(a)(i-iii) of the Policy and obtain transfer of the disputed domain name <nationwidefinancialsolutions.com>, the Complainant must prove the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has presented the Panel with sufficient evidence (see Annex C) that the Complainant owns valid United States trademarks in both NATIONWIDE and NATIONWIDE FINANCIAL. The former mark has been used throughout the United States for over 50 years, establishing clearly the Complainant’s rights.
The disputed domain name <nationwidefinancialsolutions.com>
replicates the first two words of Complainant’s NATIONWIDE FINANCIAL mark
while following it with the word “solutions” and the gTLD “.com”.
Many prior UDRP panels have ruled that merely adding a descriptive word such
as “solutions” does not serve as a meaningful distinction, and does
not prevent confusing similarity. In this case the additional word implies a
connection to the overall mark since typical Internet users seeking financial
advice from the Complainant would expect its website to provide “solutions”
to their financial problems. See Dell Inc. v. George Dell and Dell Net Solutions,
WIPO Case No. D2004-0512 (August 24, 2004)
(where the transferred domain name was <dellnetsolutions.com>); and Novell,
Inc. v. Taeho Kim, NAF Case No. FA167964 (October 24, 2003) (where the transferred
domain name was <novellsolutions.com>). Also, it is axiomatic in Policy
cases that the addition of a gTLD is not germane when considering the similarity
between a domain name and a trademark.
While conceding identity of the disputed domain name with the Complainant’s mark, the Respondent contends that only a stylized version of the mark is covered under the Complainant’s trademark. However, the Panel’s inspection of the Complainant’s trademark registrations (Annex C) do not support this contention.
As reasoned above, the Complainant has succeeded in showing that the disputed domain name is confusingly similar to a trademark in which it has rights.
B. Rights or Legitimate Interests
The Policy places upon the Complainant the burden of demonstrating the Respondent’s
lack of rights or legitimate interests in the disputed domain name. However,
should the Complainant make a prima facie case to support this negative
proposition, the burden shifts to the Respondent to rebut that case. See Telex
Communications, Inc. v. Jinzheng Net, NAF Case No. FA833071 (December 27,
2006); and Julian Barnes v. Old Barn Studios Limited, WIPO
Case No. D2001-0121 (March 26, 2001).
The evidence submitted by the Complainant shows its uncontestable trademark rights to a mark confusingly similar to the disputed domain name. Furthermore, the Complainant has alleged, without rebuttal, that it has neither licensed nor otherwise authorized the Respondent’s use of that domain name, which was clearly registered by the Respondent after the trademark was used and registered. The prima facie case is therefore made out by the Complainant.
In its Response, the Respondent claims to be making a fair, commercial use
of the disputed domain name, which it concedes is a finance-related property.
Tellingly, the Respondent does not contradict the Complainant’s contention
that the Respondent’s commercial use of the name involves linking Internet
users to websites of the Complainant’s competitors in the realm of financial
services. Many prior UDRP panels have held that linkage to a complainant’s
competitors is not a “bona fide offering of goods or services”
sufficient to satisfy the criterion listed in paragraph 4(c)(i) of the Policy
as a valid defense to the transfer of the name. See, for example, Robert
Bosch GmbH v. Asia Ventures, Inc., WIPO
Case No. D2005-0946 (November 2, 2005); and Option One Mortgage Corporation
v. Option One Lending, WIPO Case No. D2004-1052
(February 27, 2005).
Moreover, none of the other criteria which might sustain a ruling favorable to the Respondent as to rights or legitimate interests in the disputed domain name, as listed in paragraph 4(c) of the Policy, apply in this case. The Response fails to assert that the Respondent is commonly known by anything similar to the disputed domain name (criterion listed in paragraph 4(c)(ii)); and the assertion in the Response of “fair, commercial use” (emphasis added) of the name precludes the Respondent from arguing compliance with the criterion listed in paragraph 4(c)(iii), which requires the “legitimate non- commercial or fair use of the domain name, without intent for commercial gain.” Thus, nothing in the record contradicts the prima facie case made by the Complainant with respect to this issue.
Therefore, the Panel finds that the Complainant has shown that the Respondent has neither rights nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent claims that none of the bad faith criteria cited in paragraph 4(b) of the Policy hold true in this case. Furthermore, the Respondent asserts that the Complainant should not be granted a transfer because it has not sought a transfer of similar domain names ending in the gTLDs of “.net” and “.biz”, and because the Respondent registered the disputed domain name after another company with a trademark identical to the name abandoned it.
The Panel will pass over criteria listed in the Policy at paragraphs 4(b)(i) through (iii) to focus on paragraph 4(b)(iv), i.e., “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” While the Respondent claims not to be a competitor of the Complainant, it nevertheless asserts that the disputed domain name is a financial-related property – that is, one which would compete with the Complainant’s web sites for customers and create exactly the kind of confusion noted above for the commercial gain of the Respondent. Several prior Policy panels have noted that evidence of bad faith registration and use is conclusive in cases where a disputed domain name is used for links to a complainant’s direct business rivals. See, for example, Robert Bosch, supra; and Option One, supra.
Even if Respondent’s allegation that the Complainant has failed to proceed
under the Policy to obtain transfer of other domain names which might infringe
upon its trademark(s) is true, it has no bearing on the Panel’s determination
in the instant case. The Panel’s duty is not to gainsay the Complainant’s
actions involving other domain names that may violate the Complainant’s
rights under the Policy. Also, the fact that the disputed domain name could
have been registered previously by a company that may have had a legitimate
right to do so does not preclude the Complainant from demonstrating to the satisfaction
of a panel operating under the Policy that the Respondent fails to possess similar
rights; the rights of a prior domain name owner do not automatically transfer
to the next registrant. See National Collegiate Athletic Association v. Dusty
Brown, WIPO Case No. D2004-0491 (August
30, 2004), where the panel opined, “The Panel agrees…that, in most
instances, the actions of a prior registrant would be irrelevant in assessing
that of the present registrant.”
Finally, in agreement with the Complainant’s contention, the Panel dismisses
the prior case, Nationwide Mutual Insurance Company v. Nigel Penn-Simkins,
WIPO Case No. DBIZ2002-0082 (July
9, 2002), as inapplicable to the present case. The respondent in that earlier
case was found to have registered the domain name <nationwide.biz> arguably
on behalf a United Kingdom company which operated under the name “Nationwide
UK”, a crucial fact which corresponds to no established fact in this case.
Accordingly, the Panel rules that the disputed domain name was registered and
is being used by the Respondent in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nationwidefinancialsolutions.com> be transferred to the Complainant.
Dennis A. Foster
Dated: March 23, 2007