Insurance Australia Group Limited v Huade Wang

WIPO Case No. D2023-3585

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Insurance Australia Group Limited v. Huade Wang

Case No. D2023-3585

1. The Parties

The Complainant is Insurance Australia Group Limited, Australia, represented by CSC Digital Brand Services

Group AB, Sweden.

The Respondent is Huade Wang, China.

2. The Domain Name and Registrar

The disputed domain name <nrmahomeloan.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2023. On August 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2023, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 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 August 29, 2023.

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 September 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2023.

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The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on October 3, 2023. 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 is a multinational insurance company, headquartered in Sydney, Australia with a direct heritage dating back to 1920. The National Roads and Motorists’ Association (“NRMA”) has provided insurance services for many years. Now the NRMA brand operates as a unit of the Complainant and has become one of the leading general insurers in Australia and has received many important awards.

The Complainant owns many trademark registrations for NRMA in several jurisdictions, including the following:

Australian Trademark Registration No. 332018 NRMA, registered on April 26,1979, in class 36;
Australian Trademark Registration No. 341472 NRMA, registered on December 27,1979 in class 36;

Australian Trademark Registration No. 508840 NRMA, registered on April 17, 1989, in class 36.

The Complainant also owns the domain name <nrma.com.au> and <nrmahomeloans.com>.

The disputed domain name was registered on November 11, 2022, and resolves to a website with links to third party websites, some of which directly compete with the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant has developed substantial goodwill in the NRMA brand, which has become distinctive and uniquely associated with the Complainant and its products and services.

The Complainant claims that the disputed domain name is confusingly similar with the trademark NRMA in which the Complainant has rights and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

The Respondent has no relationship with the Complainant and has no permission from the Complainant to any use of any trademark comprehensive of the term “NRMA”. Moreover, the Respondent does not own any trademark comprehensive of “NRMA” and is not commonly known by the disputed domain name.

The disputed domain name was registered by the Respondent on November 11, 2022, which is significantly after the Complainant had registered the trademark NRMA, first use in commerce of its NRMA trademark, and the Complainant’s registration of its domain name <nrma.com.au>. By the time the Respondent registered the disputed domain name, the Complainant had already established goodwill and reputation on the well-known trademark NRMA.

The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, offering services such as “emergency personal loan” and “personal loan”.

The Respondent has registered and used the disputed domain name to confuse Internet users to make them
think that the website to which it resolves belongs to the Complainant and thereby benefit monetarily from
the fame of the Complainant’s trademark NRMA.

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The Complainant sent the Respondent a cease-and-desist letter which did not receive any answer from the
Respondent.

Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i)      the disputed domain name is identical or confusingly similar with 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

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The Panel considers that the disputed domain name is confusingly similar with the Complainant’s NRMA trademark.

The disputed domain name incorporates the Complainant’s trademark NRMA in its entirety. The addition of
the term “home loan” does not prevent a finding of confusing similarity. See section 1.8 of the
WIPO Overview 3.0.

The “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark NRMA in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a bona fide offering of goods
or services; or

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(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or

service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in
a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a
complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests
in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent
to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain
name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to
have satisfied the second element.

There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein.

Furthermore, there is no evidence presented to the Panel that proves any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.

Likewise, and as further discussed under section 6.C of this Decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is an official site of

the Complainant.

As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed

domain name carries a risk of implied affiliation.

prima facie

The Panel finds that the Complainant has made out a case, a case calling for an answer from the which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark NRMA mentioned in section 4 above (Factual Background) when it registered the disputed domain name on November 11, 2022. By that time, the Complainant had long ago registered and intensely used the trademark NRMA.

By registering the disputed domain name which includes the Complainant’s trademark NRMA in its entirety the Respondent was targeting the Complainant and its business. The addition of the term “home loan” only contributes to confuse Internet users and leads them to think that the relevant website belongs to or is

endorsed by the Complainant with the intention to capitalize on the fame of the Complainant’s trademark for
its own benefit.

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The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name, the nature of the disputed domain name, the passing-off of the Complainant, and the use of the disputed domain name to resolve to a website with links offering goods and services which compete with those offered by the Complainant, are indicative of bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0). The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

For the above reasons, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.

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 <nrmahomeloan.com> be transferred to the Complainant.

/Miguel B. O’Farrell/
Miguel B. O’Farrell
Sole Panelist
Date: October 12, 2023