Hartford Fire Insurance Company v Perfect Privacy, LLC / Michael

WIPO Case No. D2022-0251

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hartford Fire Insurance Company v. Perfect Privacy, LLC / Michael
Kimbro, Delivius

Case No. D2022-0251

1. The Parties

The Complainant is Hartford Fire Insurance Company, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.

The Respondent is Perfect Privacy, LLC / Michael Kimbro, Delivius, United States.

2. The Domain Name and Registrar

The disputed domain name <thehartfordtristate.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2022. On January 26, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2022, 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 February 4, 2022, 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 9, 2022.

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 February 15, 2022. In accordance with the Rules,
paragraph 5, the due date for Response was March 7, 2022. The Respondent did not submit any
Response. Accordingly, the Center notified the Respondent’s default on March 24, 2022.

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The Center appointed Evan D. Brown as the sole panelist in this matter on March 29, 2022. 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 provides insurance and financial services. It owns the trademark THE HARTFORD, for which it has obtained trademark registration in the United States (Reg. No. 1,155,051, registered on May 19, 1981).

According to the WhoIs records, the disputed domain name was registered on August 24, 2021. The Respondent has used the disputed domain name to redirect internet visitors to the Complainant’s website. The Complainant asserts that the Respondent’s redirection of the disputed domain name to the Complainant’s website may be placing cookies on the browser of visitors to the disputed domain name that allow the Respondent to track the activities or keystrokes of visitors to the disputed domain name. The disputed domain name is also configured with email servers, an indication that the disputed domain name may be in use in connection with fraudulent activity, including possible phishing or related illegal acts.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (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. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications

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Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the THE HARTFORD mark by providing evidence of its trademark registration.

The disputed domain name incorporates the THE HARTFORD mark in its entirety. This is sufficient for showing confusing similarity under the Policy.

The presence of the additional word “tristate” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s THE HARTFORD mark. See WIPO Overview 3.0, section 1.8. The THE HARTFORD mark remains sufficiently recognizable for a showing of confusing similarity under the Policy.

It is standard practice when comparing a disputed domain name to a complainant’s trademarks, to not take the extension into account. See WIPO Overview 3.0 at section 1.11.1 (“The applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

The Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant).

On this point, the Complainant asserts, among other things, that: (1) it has not authorized the
Respondent to use the THE HARTFORD mark in the disputed domain name, (2) use of the THE
HARTFORD mark in the disputed domain name is not a noncommercial or fair use, and (3) the
Respondent has not been known by the Complainant’s THE HARTFORD mark.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor. Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.

Because the Complainant’s mark is well-known, it is implausible to believe that the Respondent was not aware of such mark when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name, especially when considering the redirection of the disputed domain name to the Complainant’s genuine website. Similarly, panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See WIPO Overview 3.0, section 3.1.4. For these reasons, the Panel finds that the Complainant has successfully met this third

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UDRP element.

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 <thehartfordtristate.com> be transferred to the

Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: April 14, 2022