Westmore · UDRP DecisionPhiladelphiapainsurance.net
The Panel ordered transfer of <philadelphiapainsurance.net>. It found the domain confusingly similar to the Complainant's registered PHILADELPHIA INSURANCE COMPANY and PHILADELPHIA INSURANCE COMPANIES marks, held that the Respondent's limited insurance lead-generation activity did not establish rights or legitimate interests, and found bad faith based on the competing insurance use and the likelihood that the Respondent knew of the Complainant's rights when registering the domain.
The timeline behind philadelphiapainsurance.net
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind philadelphiapainsurance.net — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates that a respondent cannot establish legitimate interests merely by characterizing a domain as geographic or descriptive when the wording is protected by registered marks with acquired distinctiveness and the respondent uses it as the identity of a competing commercial service. It also shows that minimal affiliate or lead-generation activity may be insufficient where the use trades on the mark's source-identifying significance.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philadelphia Consolidated Holding Corporation d/b/a Philadelphia Insurance Companies v. Scott Johnson / George Hoffman / IV Marketing, Inc. Case No. D2014-0758 1. The Parties Complainant is Philadelphia Consolidated Holding Corporation d/b/a Philadelphia Insurance Companies, of Bala Cynwyd, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America. Respondents are Scott Johnson of Saginaw, Michigan, United States of America / George Hoffman of Marathon, Florida, United States of America / IV Marketing, Inc. of Marathon, Florida, United States of America, represented by George Hoffman (hereinafter collectively referred to as “Respondent”). 2. The Domain Name and Registrar The disputed domain name <philadelphiapainsurance.net> 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 May 8, 2014. On May 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2014. The Response was filed with the Center on June 5, 2014. On June 10, 2014 Complainant filed a Supplemental Filing, to which Respondent replied on June 11, 2014. The Panel finds it unnecessary to consider either Supplemental Filing. The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 11, 2014. 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 a provider of insurance services and products in the United States, with its headquarters in Bala Cynwyd, Pennsylvania. Complainant is the owner of the following U.S. Trademark Registrations: 3,777,291 PHILADELPHIA INSURANCE COMPANIES Registered April 20, 2010 For: insurance underwriting services, namely, professional liability insurance, commercial lines of insurance, directors and officers liability insurance, errors and omissions insurance, specialty property and inland marine insurance, automobile insurance, business and personal property casualty insurance and worker’s compensation insurance; surety services in class 36 Claiming date of first use December 1980 3,770,831 PHILADELPHIA INSURANCE COMPANY Registered April 6, 2010 For: insurance underwriting services, namely, professional liability insurance, commercial lines of insurance, directors and officers liability insurance, errors and omissions insurance, specialty property and inland marine insurance, automobile insurance, business and personal property casualty insurance and worker’s compensation insurance; surety services, in class 36 Claiming date of first use December 1980 3,783,972 PHILADELPHIA INSURANCE COMPANIES AND DESIGN Registered May 4, 2010 For: insurance underwriting services, namely, professional liability insurance, commercial lines of insurance, directors and officers liability insurance, errors and omissions insurance, specialty property and inland marine insurance, automobile insurance, business and personal property casualty insurance and worker’s compensation insurance; surety services, in class 36 Claiming date of first use October 1998 The certificates for each of the above registrations indicate that the Complainant submitted “Section 2(f)” (of the Lanham Act) evidence of more than five years continuous use during the application for the Registration, and that such evidence was accepted by the United States Patent and Trademark Office (USPTO). The disputed domain name was created on May 17, 2011. 5. Parties’ Contentions A. Complainant Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s registered trademarks, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent does not dispute Complainant’s rights in its above-referenced registered trademarks. Rather, Respondent contends that Complainant does not have exclusive rights in the term “Philadelphia Insurance” (while also conceding that it is associated with Complainant), that Respondent’s offer of personal insurance information and quotes at the disputed domain name does not create a likelihood of confusion with Complainant’s mark, that the disputed domain name is descriptive of Respondent’s services, consistent with Respondent’s practice of “registering domain names to profit from the generic and descriptive qualities of each.” Respondent further contends that it registered the disputed domain name to provide information and opportunities for individuals residing in Philadelphia to obtain more affordable personal insurance coverage. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant owns three U.S. Trademark Registrations that include the term “Philadelphia Insurance” accompanied by the word “Company” or “Companies.” The disputed domain name incorporates the dominant elements of Complainant’s trademark except for the word Company or Companies. The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests Based on previous UDRP decisions, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Complainant’s allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Complainant’s trademark Registrations all issued prior to the registration of the disputed domain name and are prima facie evidence of the validity of the marks, the registration of the marks, the owner’s ownership of the marks, and of the owner’s exclusive right to use the registered marks in commerce on or in connection with the goods or services specified in the certificate. 15 U.S. Code (U.S.C.) Section 1057(b). Each of the registrations indicate that Complainant submitted “Section 2(f)” evidence of at least five years of continuous use of the marks and that such evidence was accepted by the USPTO as showing that the mark had acquired distinctiveness or secondary meaning. The registrations also constitute constructive notice of Complainant’s claim of ownership of the marks as of the date of registration. 15 U.S.C. Section 1072. Respondent has no relationship with Complainant and has no permission from Complainant to use Complainant’s trademark or any domain name incorporating that trademark. There is no evidence that Respondent is commonly known by the disputed domain name. Nothing in the WhoIs contact information for Respondent implies that any person or entity associated with Respondent is commonly known by that name. Respondent has not submitted any evidence that it is located in Philadelphia. Respondent claims that it made efforts to operate a genuine business through the disputed domain name, relying on an email conversation on December 1, 2010 with USInsuranceOnline/All Web Leads Affiliate Program. Respondent claims that the “first action through Respondents’ website and quote system occurred December 31, 2011” and that this evidences its bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the disputed domain name. Other than eight “leads” generated by respondent during the period December 2011- January 2012, Respondent did not provide any further evidence of the offering of services using the domain name. The evidence submitted with the Complaint indicates that the disputed domain name linked to a website with the heading “Philadelphia Insurance” and the text of the website included the statement that “ Philadelphia Insurance is an established insurance service that matches the right coverage to your specific needs.” (Emphasis in original). The term “Philadelphia Insurance” is thus being used by Respondent to identify an “established insurance service” and is not being used in a purely descriptive sense, as Respondent claims. The website provides very basic and general information about various insurance products offered by various insurance companies, including the same or similar products as Complainant. Respondent presumably receives compensation in the form of “click through” or web page impression or “lead” revenues from the insurance companies. Respondent referenced eight lead contacts generated through its website occurring December 31, 2011- January 31, 2012, for which it was paid. This type of activity is insufficient to establish legitimate interests in respect of the disputed domain name. Respondent’s arguments are premised on the mistaken belief that trademarks cannot be established in descriptive or geographic names and that, therefore, it is entitled to use term “Philadelphia Insurance”. That is not correct. American Airlines and Bank of America are well-known examples of trademarks that incorporate geographic terms. In this case, Complainant has obtained several U.S. Trademark Registrations for its mark which are entitled to a presumption of validity. The disputed domain name incorporates the dominant elements of those registered trademarks. Respondent has failed to come forward with evidence demonstrating rights or legitimate interests in the disputed domain name sufficient to rebut Complainant’s prima facie case. The Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. (Policy, paragraph 4(b)). The factors delineated in the Policy, paragraph 4(b), as supporting bad faith registration and use are “without limitation.” Complainant’s U.S. Trademark Registrations were registered in April and May 2010, but claim a date of first use as early as 1980 and 1998. Respondents concede the validity of Complainant’s registered trademarks listed in the Complaint. Thus, the evidence indicates that Complainant had used its mark for more than 20 years prior to the registration of the disputed domain name by Respondent. In addition, Respondent’s use of the disputed domain name to provide links or leads to companies providing insurance products and services that are related to and/or compete with Complainant’s goods and services indicates that it is likely that Respondent had knowledge of Complainant’s rights in its mark at the time of registering the disputed domain name. Such knowledge may also be inferred by the address listed on Respondent’s website, which is located just a few miles from Complainant’s headquarters in Pennsylvania. The Panel finds that Respondent has registered and is using the disputed domain name 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 <philadelphiapainsurance.net> be transferred to the Complainant. Lynda J. Zadra-Symes Sole Panelist Date: June 25, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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