Hartford Fire Insurance Company v Willie Willie

WIPO Case No. D2023-4687

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hartford Fire Insurance Company v. Willie Willie

Case No. D2023-4687

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 Willie Willie, United States.

2. The Domain Name and Registrar

The disputed domain name <thehartfordinc.com> (the “Disputed Domain Name”) is registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2023. On November 13, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Disputed Domain Name. On November 13, 2023, the Registrar

transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which dif fered f rom the named Respondent (Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2023, 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 November 20, 2023.

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 November 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2023. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on December 21, 2023.

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The Center appointed Lynda M. Braun as the sole panelist in this matter on January 4, 2024. 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

Founded in 1810, the Complainant operates one of the largest insurance and financial services businesses in the United States. The Complainant provides asset management services, life insurance, automobile and homeowners insurance, business insurance and reinsurance, group and employee benefits, and investment products to its customers through independent agents and brokers, financial institutions, affinity groups, and to the public via the Internet. Through long and exclusive use and a signif icant investment of time, money and ef fort over many years, the Complainant has developed goodwill in THE HARTFORD trademarks, which have come to be identif ied exclusively with the products and services of the Complainant.

The Complainant owns the following trademarks in the United States, registered with the United States
Patent and Trademark Of f ice (“USPTO”): THE HARTFORD, United States Trademark Registration
No. 1,155,051, registered on May 19, 1981, with a first use in commerce date of 1971, in international class
36; THE HARTFORD, United States Trademark Registration No. 2,487,011, registered on September 11,
2001, in international class 36; HARTFORD, United States Registration No. 2,153,891, registered on April
28, 1998, in international class 36; and HARTFORD, United States Registration No. 2,153,863, registered
on April 28, 1998, in international class 36. The Complainant also owns registered trademarks for THE

HARTFORD in various jurisdictions worldwide.

The aforementioned trademarks will hereinaf ter collectively be referred to as “THE HARTFORD Mark”.

The Complainant owns the domain name <thehartford.com> that resolves to its of f icial website at
“ and on which the Complainant prominently uses THE HARTFORD Mark to promote
and of fer insurance and f inancial products.

The Disputed Domain Name was registered on November 1, 2023, long after the Complainant began to use THE HARTFORD Mark, and long after the Complainant had secured registrations for its trademarks in the United States and other jurisdictions worldwide. At the time the Complainant submitted the Complaint in this case, the Disputed Domain Name redirected to the Complainant’s official website at “ to impersonate the Complainant and lead consumers to believe that they had arrived at the Complainant’s website, which they had not. Screenshots of the Respondent’s resolving website were submitted by the Complainant as an annex to the Complaint. As of the writing of this decision, however, the Disputed Domain Name redirects to a landing page with no substantive content that states, “This site can’t be reached.

Thehartfordinc.com’s server IP address could not be found”.

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 the Complainant’s trademark because the Disputed Domain Name contains THE HARTFORD Mark in its entirety, and the additional term “inc” and the generic Top-Level Domain (“gTLD”) “.com” do not prevent a f inding of confusing similarity;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not authorized the Respondent to register a domain name containing THE HARTFORD

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Mark, the Respondent was not making a bona fide of fering of goods or services through the Disputed Domain Name, and the Respondent has never been commonly known by THE HARTFORD Mark or any similar name; and

- the Disputed Domain Name was registered and is being used in bad faith because, among other things, the
Disputed Domain Name initially resolved to the Complainant’s of f icial website.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to THE HARTFORD Mark as explained below.

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 a 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 established rights in THE HARTFORD Mark based on its years of use since 1971, as well as its registered trademarks for THE HARTFORD Mark in the United States since 1981, and other jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to f ile a UDRP case”. Thus, the Panel finds that the Complainant satisf ied the threshold requirement of having rights in THE HARTFORD Mark.

The Disputed Domain Name consists of THE HARTFORD Mark in its entirety, followed by the term “inc”, and then followed by the gTLD “.com”. Where the trademark is recognizable in the Disputed Domain Name, the addition of a term such as “inc” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a f inding of confusing similarity under the f irst element”).

Finally, the addition of a gTLD such as “.com” in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is

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identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO
Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the

Disputed Domain Name is confusingly similar to the Complainant’s THE HARTFORD Mark.

Based on the available record, the Panel 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. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the dif f icult 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 that 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 Complainant has not authorized, licensed, or otherwise permitted the Respondent to use THE HARTFORD Mark nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name, nor any evidence that the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide of fering of goods or services. See Policy, paragraph 4(c). The Disputed Domain Name initially directed users to the Complainant’s official website, and such use likely confused consumers as to the source of the services being of fered. Such use would not support a claim to rights or legitimate interests.

Further, the Panel concludes that nothing on the record before it would support a f inding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Panel f inds that the Respondent is using the Disputed Domain Name for commercial gain with the intent to mislead by deceiving the Complainant’s customers into believing that they arrived at the Complainant’s website. Such use cannot conceivably constitute a bona fide of fering of a product/service within the meaning of paragraph 4(c)(i) of the Policy or a noncommercial or fair use of the Disputed Domain Name.

In sum, 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.

Based on the available record, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel f inds that based on the record, the Complainant has demonstrated the existence of the the Policy.

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.

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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.

In the present case, the Panel notes that THE HARTFORD Mark is contained in its entirety in the Disputed Domain Name. The use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location for commercial gain demonstrates registration and use in bad faith. Here, the Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on and targeting the name and reputation of the Complainant. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional ef fort to trade upon the fame of Complainant’s name and mark for commercial gain”).

Moreover, the Panel concludes that the Respondent’s registration of the Disputed Domain Name was an attempt to disrupt the Complainant’s business by diverting Internet users who were searching for the Complainant’s services f rom its of f icial website to the Respondent’s website, as well as to prevent the Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Respondent’s use of the Disputed Domain Name was also highly likely to confuse Internet users into incorrectly believing that the Respondent was somehow authorized by or af f iliated with the Complainant, and to disrupt the Complainant’s business by using the Complainant’s own website to offer insurance and/or financial services that would be purchased f rom the Respondent, while appearing to be purchased f rom the Complainant.

The Panel also finds that the Respondent knew that the Complainant had rights in THE HARTFORD Mark when registering the Disputed Domain Name, emblematic of bad faith registration and use. It strains credulity to believe that the Respondent did not know of the Complainant or THE HARTFORD Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (“a f inding of bad faith may be made where the respondent ‘knew or should have known’ of the registration and/or use of the trademark prior to registering the domain name”). Thus, the Panel finds that in the present case, the Respondent had the Complainant’s THE HARTFORD Mark in mind when registering and using the Disputed Domain Name.

In sum, the Panel concludes that the circumstances of this case, including the claim that the Disputed Domain Name had been used to impersonate the Complainant, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Disputed Domain Name had been put, support an inference of bad faith.

Based on the available record, the Panel finds that the third element of the Policy has been established.

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 <thehartfordinc.com> be transferred to the Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: January 18, 2024