Chubb INA Holdings Inc. v jiri capcuch jiri capcuch, Jiří Čapčuch

WIPO Case No. D2025-0741

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Chubb INA Holdings Inc. v. jiri capcuch jiri capcuch, Jiří Čapčuch

Case No. D2025-0741

1. The Parties

The Complainant is Chubb INA Holdings Inc., United States of America, represented by Fish & Richardson

P.C., United States of America (“United States”).

The Respondent is jiri capcuch jiri capcuch, Jiří Čapčuch, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <chubbinsurence.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2025. On February 24, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On February 25, 2025, 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 (Whois Privacy / Private by Design, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 25, 2025, 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 February 25, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on February 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on March 20, 2025.

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The Center appointed Stefan Bojovic as the sole panelist in this matter on March 25, 2025. The Panel f inds 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, through its predecessors in interest, has used the CHUBB mark for insurance services since 1882. With operations in 54 countries and territories, the Complainant provides commercial and personal property and casualty insurance, personal accident and supplemental health insurance,

reinsurance and life insurance to a diverse client base. The Complainant has a global workforce of
approximately 40,000 employees. The Complainant’s parent company, Chubb Limited, trades on the New
York Stock Exchange (NYSE: CB) and is a component of the S&P 500 index.

The Complainant is the owner of number of registered trademarks for the CHUBB trademark, including the following:

- United States trademark registration No. 1729813 for CHUBB, registered on November 3, 1992;

- United States trademark registration No. 5648457 for CHUBB, registered on January 8, 2019; and Furthermore, the Complainant is the owner of a number of domain name registrations containing its CHUBB trademark, such as <chubb.com>, registered on September 7, 1995 (used for the Complainant’s principal website) and <chubbinsurance.com> registered on April 21, 1999.

- United States trademark registration No. 5586289 for CHUBB, registered on October 16, 2018.

The disputed domain name was registered on September 3, 2024, and it resolves to a parking page with sponsored links (Pay-Per-Click page or PPC page) presenting various insurance-related links.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its CHUBB trademark. Further, the Complainant holds that the addition of the word “insurence”, which is a misspelled version of the descriptive term “insurance”, does not prevent a finding of confusing similarity. Similarly, the generic Top-Level-Domain (“gTLD”) “.com” should not be taken into account when assessing confusing similarity.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant contends that the Respondent is neither authorized, licensed, or otherwise permitted to use its well-known CHUBB trademark or any corresponding domain name. The Respondent is not commonly known by the disputed domain name. The Respondent’s use of the disputed domain name for a PPC page does not qualify as a bona f ide of fering of goods and services.

With reference to the circumstances evidencing bad faith, the Complainant states that its CHUBB trademark has been in use for over f ive decades and is globally recognized in the insurance industry. Given the Complainant’s international success, there is no reasonable explanation for the Respondent’s registration of the disputed domain name other than an intent to target the Complainant’s trademark rights. The

Respondent’s use of the disputed domain name for PPC page constitutes bad faith and indicates the Respondent’s intention to make commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

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Finally, the Complainant underlines that the Respondent has been involved in numerous UDRP cases, which indicates that the Respondent is engaged in a pattern of bad faith practices under paragraph 4(b)(ii).

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy stipulates that the complainant must prove each of the following:

(i) that the disputed domain name registered by the respondent 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

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, “insurence” (which is a misspelled version of the word
“insurance”) may bear on assessment of the second and third elements, the Panel finds the addition of such
term does not prevent a f inding of confusing similarity between the disputed domain name and the
Complainant’s trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In addition, it is well established that “.com”, as a gTLD, can be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark. WIPO Overview 3.0, section 1.11.1.

The Panel, therefore, f inds that the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that there seems to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s CHUBB trademark. There appears to be no element f rom which the Panel could infer the Respondent’s rights and legitimate interests in the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

On the contrary, the Respondent, who appears to be a serial cybersquatter involved in a number of UDRP proceedings, has a history of registering domain names that target various trademark holders. All of these prior UDRP cases were decided in favor of complainants. Under such circumstances, it is difficult to imagine any legitimate interest on the Respondent’s side that would justify its actions.

The Panel also finds that the structure of the disputed domain name, which contains the Complainant’s CHUBB trademark in combination with the word “insurence” (which is a misspelled version of the word “insurance”) carries a risk of implied affiliation, especially in the light of the fact that the Complainant main f ield of business is insurance. The Panel f inds that there is a risk that Internet users will not notice the subtle misspelling. WIPO Overview 3.0, section 2.5.1

The Panel also finds that the use of the disputed domain name for a parking page with pay-per-click links does not represent a bona f ide of fering, having in mind that links in this case are related to insurance services and therefore they compete with and capitalize on the reputation and goodwill of the Complainant’s trademark and mislead Internet users. WIPO Overview 3.0, section 2.9.

Having in mind the above, the Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

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In the present case, the Panel notes that the Respondent must have been aware of the Complainant and its CHUBB trademark, especially having in mind the structure of the disputed domain name that includes additional word “insurence” (a misspelled version of the word “insurance”), which makes a direct reference to the Complainant’s filed of business. Furthermore, the Respondent’s UDRP record shows clear intent of targeting third-party trademarks and it is, therefore, highly unlikely that the Respondent decided to register a domain name containing the Complainant’s trademark without having the Complainant in mind when doing so. It should be also borne in mind that the f irst registration and use of CHUBB trademark predates the registration of the disputed domain name by decades, making it unlikely that the Respondent was not aware of the Complainant’s trademark at the time of registration of the disputed domain name.

Due to the above, the Panel f inds that the disputed domain name has been registered in bad faith.

As mentioned above, the disputed domain name resolves to a parking page with PPC links related to insurance services, meaning that they compete with and capitalize on the reputation and goodwill of the Complainant’s trademark. Therefore, the Panel deems that by such use of the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, af f iliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy. This constitutes bad faith use of the disputed domain name.

Therefore, the Panel finds that the disputed domain name has been both registered and is being used in bad faith, and consequently that the Complainant has established the third element of the Policy.

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 <chubbinsurence.com> be transferred to the Complainant.

/Stefan Bojovic/
Stefan Bojovic
Sole Panelist
Date: April 8, 2025