Andrew Fusco is a public loss adjuster and consultant with 31 years of experience in the insurance industry. He acquired the domain name ClaimShield.com as the registered agent of Claimshield LLC and Claimshield Holdings Inc, entities established under the laws of Puerto Rico.
Z and J Enterprise Inc.filed a UDRP to usurp this two-word .com domain claiming rights in the CLAIM SHIELD mark that were established in 2019. The domain was acquired by the Respondent some time after 2016.
The Forum (NAF) panelist found that the Respondent acquired and used the domain in good faith. Final decision: Deny the transfer of the domain name ClaimShield.com to the Complainant.
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.Z and J Enterprise Inc. v. andrew fusco
Claim Number: FA2405002098362
PARTIES
Complainant is Z and J Enterprise Inc. (“Complainant”), represented by Neil Peluchette of Taft Stettinius & Hollister LLP, Indiana, USA. Respondent is andrew fusco (“Respondent”), represented by Jean Vidal-Font, Esq. of Ferraiuoli LLC, Puerto Rico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is claimshield.com (“Domain Name”), registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 17, 2024; Forum received payment on May 17, 2024.
On May 21, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the claimshield.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@claimshield.com. Also on May 22, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 17, 2024.
On June 18, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a United States company that since January 1, 2017 has offered loss recovery services and insurance consultation services under the CLAIM SHIELD brand. Complainant asserts rights in a device mark containing the words CLAIM SHIELD (“CLAIM SHIELD mark”) based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,941,568, registered December 24, 2019). The Domain Name is identical or confusingly similar to the CLAIM SHIELD mark because the Domain Name consists of the entirety of the CLAIM SHIELD Mark, as well as the generic top-level domain (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the claimshield.com domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the CLAIM SHIELD mark. Additionally, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Rather, Respondent is passing off as Complainant or affiliated with Complainant in order to divert consumers to its competing services.
Respondent registered and uses the Domain Name in bad faith. Respondent acquired the Domain Name after Complainant’s first use of the CLAIM SHIELD mark and directly competes with Complainant and passes off as the Complainant or being associated with Complainant. Additionally, given the offering of insurance services Respondent had actual or constructive knowledge of Complainant’s rights in the CLAIM SHIELD mark at the time of registration.
B. Respondent
Respondent is an individual who is a public loss adjuster and consultant with 31 years of experience in the insurance industry. He holds the Domain Name as registered agent of Claimshield LLC and Claimshield Holdings Inc, entities established under the laws of Puerto Rico before any notice of the dispute. Indeed, Respondent holds a number of domain names that contain the “claim” element that predate any use by Complainant of the CLAIM SHIELD mark.
The Domain Name was registered in 2010 and its previous owner offered insurance services from a website at the Domain Name, indicating the terms “claim” and “shield” are common in the insurance industry. The Respondent provides further evidence that other businesses in the insurance industry that use the “claim” and “shield” elements, indicating that Complainant does not have an exclusive right to or reputation in the CLAIM SHIELD name.
Respondent acquired the Domain Name from the previous owner to offer insurance services under the CLAIM SHIELD name through Claimshield LLC and Claimshield Holdings Inc. Respondent is commonly known by the Domain Name as the Domain Name aligns with its corporate entity. Respondent is not disrupting the Complainant’s business but making a bona fide offering of services from its website under a Domain Name which corresponds to its registered company name in Puerto Rico.
FINDINGS
Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the Domain Name, has not established all required elements of its claim, and thus its complaint must be denied.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant asserts rights in the CLAIM SHIELD mark through its registration of the mark with the USPTO (e.g., Reg. No. 5,941,568, registered December 24, 2019). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the claimshield.com domain name is confusingly similar to Complainant’s CLAIM SHIELD mark because it wholly incorporates the portion of Complainant’s CLAIM SHIELD mark reproducible in a Domain Name (the device elements not being reproducible) and adds the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the CLAIM SHIELD mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel holds that Complainant has not made out such a prima facie case. Rather, there are factual and legal issues that are unresolved by the evidence presented and the Panel is of the opinion that this case is not one that is well suited for resolution under the Policy. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that “can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery….”).
The Domain Name resolves to a website (“Respondent’s Website”), operated by Respondent which, on its face, indicates that Respondent operates an insurance business known as “Claim Shield”. This is supported by the Respondent’s evidence of having established two companies with names corresponding to the Domain Name and Claim Shield business prior to any notice of the dispute. The Respondent’s Website does not either explicitly or (to the best of the Panel’s knowledge) implicitly make any reference to Complainant or otherwise suggest an affiliation (other than the shared use of the mark/mark elements “CLAIM SHIELD” for insurance services, which the Panel will address further below). In particular, the Panel rejects Complainant’s unsupported assertions that the Respondent’s Website mimics the Complainant’s Website (or the device mark displayed on the Respondent’s Website is in any way similar to the device elements in the CLAIM SHIELD Mark); other than the shared use of the mark/mark elements “CLAIM SHIELD” for insurance services the websites have no commonalities and the device elements in the brands are very different.
The Panel accepts Respondent’s submission that the terms “claim” and “shield” are commonly used in the insurance industry and hence there is a reason for the use of the “claim shield” term absent any connection with Complainant and acknowledges that the evidence of Respondent’s other domain name registrations of marks containing the “claim” element supports the submission that Respondent acquired the Domain Name for its inherent meaning rather than any connection with the Complainant. The Panel notes that Complainant has not registered the words CLAIM SHIELD as a mark, rather the Complainant holds a registration of a device mark incorporating those words and Respondent’s Website does not reproduce the CLAIM SHIELD mark.
The Panel also notes that there is no other evidence of any conduct engaged in by the Respondent that suggests the use of the Domain Name is anything other than for a bona fide offering of services, such as phishing e-mails, misleading statements, a pattern of conduct of abusive registrations or the like.
The Panel has concerns with the extent of the Respondent’s evidence of its business. The Respondent’s Website is a fairly limited website with limited functionality. The Respondent provides no history of its the establishment of the Claim Shield business or whether it actively provides insurance services, instead relying on limited assertions and its limited registrations. This may be explained by the fact that Respondent is in the course of establishing the business rather than actively trading. The Panel does not find the use of the Domain Name by a prior owner for similar services to be of much relevance in establishing rights or legitimate interests for the current Respondent, through it does provide a further plausible explanation for the Respondent’s registration and use of the Domain Name (e.g. Respondent wished to set up a similar business under a similar name to that operating from the Domain Name in 2015).
A panel has to be positively satisfied that a respondent lacks rights and legitimate interests under this element of the Policy. While acknowledging the limitations of the Respondent’s evidence, in the Panel’s evaluative judgement of the evidence before it, the Panel is not satisfied that the Respondent lacks rights and legitimate interests. The Panel considers that any questions of fact regarding the nature and legitimacy of the Respondent’s business and company registration are better resolved in a venue that has explicit forensic powers which a Panel under the Policy does not have.
Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”. Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). See also Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) (“the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”). The Panel acknowledges that Respondent’s conduct may infringe Complainant’s CLAIM SHIELD mark (while noting that the CLAIM SHIELD mark is a device mark rather than a word mark) or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.
However, the question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature and hence the limited evidence that Respondent operates or has taken demonstrable preparations to operate business known as Claim Shield (including its registration of corresponding company names prior to any notice of the present dispute) is a sufficient basis to find that the Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name. The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable). If the Complainant wishes to bring proceedings against the Respondent for trademark infringement or passing off, such a proceeding is more appropriately brought in a court of competent jurisdiction.
The Panel notes that in the event that further information arises that suggest that the motives of the Respondent in registering the Domain Name was anything other than the intention to use in respect of Claim Shield business, there may be grounds to consider a refiled complaint, subject to the applicable criteria.
Registration and Use in Bad Faith
In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the claimshield.com domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: June 19, 2024
