Epik, the domain registrar, is being named as the Respondent in a UDRP decision involving the domain name Nationwidexcessandsurplus.com at the WIPO.
The case is rather odd, as it describes some alarming behavior by the Respondent’s CEO, potentially unbecoming of a domain registrar operator.
In particular, Epik acknowledged that it was a “clerical error” that erroneously identified a person named “Manu Miglani” of Privacy Gods Limited as the domain’s registrant. The UDRP was filed by Nationwide Mutual Insurance Company, that cite NATIONWIDE as their famous trademark.
According to the UDRP, the Epik founder and CEO, Mr. Rob Monster, communicated with the Center in person about this UDRP filing.
Here are some notes:
“The Registrar/Respondent communicated with the Center on numerous occasions, in some instances making disparaging remarks about the Complainant’s supposed trademark, UDRP, and settlement strategies, attaching UDRP decisions, providing links to blog posts and articles, and demanding that the Panel find the Complainant guilty of abusing the UDRP and attempting Reverse Domain Name Hijacking.
The Registrar/Respondent stated its willingness to “settle” the dispute for a “nominal sum of [USD] 1,500”, and this proceeding was suspended to allow the parties to explore this possibility.”
The UDRP notes state that the Respondent “never actually explained why it registered the Domain Name, nor did it reply to the Complainant’s substantive contentions by submitting a Response.”
W. Scott Blackmer, sole panelist at this UDRP, also noted that “the Registrar/Respondent or its CEO have been named in many other UDRP proceedings in which they submitted no response.” The decision’s notes link to several such cases.
Final decision: transfer the domain name Nationwidexcessandsurplus.com to the Complainant. Full details on this UDRP decision follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Mutual Insurance Company v. Privacy Administrator, Anonymize, Inc. / “Manu Miglani”, Privacy Gods Limited / Epik Inc.
Case No. D2019-18161. The Parties
The Complainant is Nationwide Mutual Insurance Company, United States of America (“United States”), represented by Dinsmore & Shohl LLP, United States.
The Respondents are Privacy Administrator, Anonymize, Inc., United States / “Manu Miglani”, Privacy Gods Limited, United Kingdom / Epik Inc., United States.
2. The Domain Name and Registrar
The disputed domain name <nationwidexcessandsurplus.com> (the “Domain Name”) is registered with Epik Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2019. On July 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 1, 2019, 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 7, 2019. In response to the Complainant’s latter filing, the Registrar claimed on the same day that there was a clerical error in the Registrar Verification and disclosed the underlying registrant of the Domain Name. On August 9, 2019, the Center requested that the Complainant submit a second amendment to the Complaint to reflect the registrant details shared by the Registrar. On August 13, 2019, the Complainant filed a second amended Complaint.
The Center verified that the Complaint together with the amendments to the 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 August 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2019.
The Complainant requested permission to submit supplemental evidence on August 15, 2019, concerning the use of the Domain Name and also regarding the terms “Excess and Supply” [sic]. In response to several communications received from the Registrar/Respondent, the Center sent the Parties an email regarding possible settlement on August 21, 2019, to which the Complainant responded on August 26, 2019, requesting suspension of the proceeding. The proceeding was suspended on August 28, 2019. On September 13, 2019, the Complainant asked the Center to reinstitute the proceeding. The Center reinstituted the proceeding on September 17, 2019, setting September 24, 2019, as the due date for filing a Response.
The “Respondent” did not submit any formal response but continued to send emails to the Center and the Complainant. The Complainant submitted a “Supplemental Statement” on October 1, 2019.
The Center notified the Parties that it was proceeding to appoint the panel and appointed W. Scott Blackmer as the sole panelist in this matter on October 2, 2019. 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 mutual insurance company founded over 90 years ago and incorporated in the state of Ohio, United States, with headquarters in Columbus, Ohio. The Complainant offers a range of personal and commercial insurance and financial services across the United States, including automobile, motorcycle, boat, homeowners, pet, farm, life, and business insurance, as well as annuities, mortgages, mutual funds, pensions, long-term savings plans, and specialty health services. According to the Complaint, the Complainant is one of the largest insurance and financial services companies in the world, with more than USD 158 billion in statutory assets.
Beyond its core products, the Complainant’s offerings include “excess insurance” (coverage above primary insurance limits provided by the Complainant or another insurer) and “surplus” lines of insurance underwritten for specialty risks in coordination with other insurers. See, e.g., Investopedia articles on “Insurance, Excess Insurance, and Reinsurance” and “Surplus Lines Insurance”. The Complainant advertises online that its “E&S/Specialty team” provides “excess and surplus property, casualty, commercial auto, personal lines, and specialty insurance coverages” for small to medium accounts and also for larger, hard-to-place risks served by wholesale brokers and program managers.
Since 1955, the Complainant has offered insurance and financial services under the NATIONWIDE mark, through an exclusive network of authorized agents and representatives. The Complainant reports that it has spent USD billions in advertising its business under this mark in print and broadcast media, on the Internet, and in social media. The United States Trademark Trial and Appeal Board found in 2016 that the NATIONWIDE trademark has become famous in the market for insurance services in the United States. Nationwide Mutual Insurance Company v. Nationwide Realty, LLC, 120 U.S.P.Q.2d (BNA) 1618 (T.T.A.B. 2016). The Complainant has operated a website at “www.nationwide.com” since 1994.
The Complainant has numerous United States trademark registrations comprising or incorporating the NATIONWIDE mark. These include United States Trademark Registration Number 854888 (registered August 13, 1968) for NATIONWIDE as a standard character mark.
The Domain Name was created on April 11, 2017, and registered in the name of a privacy service. Following the notice of this dispute and the Center’s request for Registrar Verification, the Registrar identified the Respondent “Manu Miglani” of Privacy Gods Limited in London, United Kingdom as the registrant. No such individual or entity has expressed an interest in the Domain Name in this proceeding, and the online database operated by the United Kingdom Companies House shows that Privacy Gods Limited was dissolved on March 5, 2019; it is therefore not clear that such individual exists. Subsequently, Mr. Rob Monster, founder and CEO of the Registrar Epik Inc. of Sammamish, Washington, United States (“Epik”) stated variously in communications with the Center, beginning with an email dated August 7, 2019, that Mr. Monster himself or the Registrar as an organization is the registrant, finally concluding that “Epik” is the “registrant and respondent” and that “there was a clerical error previously” in identifying the registrant as “Manu Miglani” of Privacy Gods Limited. Accordingly, the Registrar Epik Inc. is referred to hereafter as the Respondent. The Registrar/Respondent operates a website at “www.epik.com”, where it maintains a large-scale domain name marketplace and offers a variety of website hosting, design, and security services in addition to its registrar services.
The Domain Name resolved for a time to a landing page with third-party sponsored listings, pay-per-click (“PPC”) advertising links for insurance products offered by multiple companies, as illustrated by a screenshot from May 12, 2019, attached to the Complaint. At the time of this Decision, it appears that the content of the website to which the disputed domain name resolves, changes according to the user’s settings or geographical location.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its NATIONWIDE trademark, incorporating the mark in its entirety and adding generic or descriptive terms. The Complainant argues that the Respondent has no permission to use the mark in the Domain Name and that there is no evidence that the Respondent is known by a corresponding name, has ever used the Domain Name in connection with a bona fide commercial offering, or otherwise has rights or legitimate interests in the Domain Name.
Rather, the Complainant contends, the Respondent has used the Domain Name only for a PPC advertising landing page that misleadingly attracted Internet users familiar with the Complainant’s well-known mark, for commercial gain. The Complainant argues that such conduct has long been recognized as bad faith for Policy purposes, because the Respondent must take responsibility for this advertising use of the Domain Name even if the links to third parties were automatically generated. According to the Complainant, the Respondent’s use of a domain name privacy service to obscure its identity further supports an inference of bad faith. The Complainant has also accused the Respondent of cyberflight, as it successively changed the registrant identification in the course of this proceeding and failed promptly to lock the registration, suggesting a pattern of obfuscation and delay.
B. Registrar/Respondent
The Registrar/Respondent communicated with the Center on numerous occasions, in some instances making disparaging remarks about the Complainant’s supposed trademark, UDRP, and settlement strategies, attaching UDRP decisions, providing links to blog posts and articles, and demanding that the Panel find the Complainant guilty of abusing the UDRP and attempting Reverse Domain Name Hijacking. The Registrar/Respondent stated its willingness to “settle” the dispute for a “nominal sum of [USD] 1,500”, and this proceeding was suspended to allow the parties to explore this possibility.
Nevertheless, the Registrar/Respondent never actually explained why it registered the Domain Name, nor did it reply to the Complainant’s substantive contentions by submitting a Response. This is important because, while the Complainant bears the burden of proof and must submit its Complaint with a certification of accuracy and completeness, the Rules also require that a Response address the Complainant’s contentions and conclude with the following statement of the Respondent or its authorized representative:
“Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” (the Rules, paragraph 5(c)(viii))
Lacking this certification, the Respondent’s various incomplete and unsupported statements in emails to the Center are not entitled to weight. The Registrar/Respondent demands that the Complainant be held accountable for its good faith and truthfulness. The same rule of fairness applies, of course, to the Registrar/Respondent, and that is the point of the Rules, paragraph 5. Long before this dispute, the Registrar/Respondent should have been familiar with the Policy procedures for a fair hearing. The Registrar/Respondent is not a casual domain name investor but an accredited ICANN registrar operating a substantial domain name and website hosting business. It had additional time to consider a Response in this proceeding because of the extension for settlement discussions. If the Registrar/Respondent will not state reasons and offer evidence with a certification of accuracy and completeness, the Panel is entitled to draw adverse inferences.
The Panel notes that the Registrar/Respondent or its CEO have been named in many other UDRP proceedings in which they submitted no response (see below). The Registrar/Respondent would be well advised to speak up if it wants to be heard, or to change its practices if they are indefensible.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under 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”.
6.1 Supplemental Filings
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see the Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding with due expedition. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The Complainant filed a Supplemental Statement and offered to file additional evidentiary material and arguments, depending on what the Panel chose to consider from the Respondent’s various emailed communications. Given the Panel’s rejection of those communications as uncertified remarks, and the lack of material new evidence or unforeseeable arguments, it is not necessary to consider the Complainant’s Supplemental Statement or invite further briefing by the parties. Moreover, the Complainant should have foreseen the need to describe its excess and surplus insurance business from the outset, without requiring supplemental briefing, as those terms appear in the Domain Name itself.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7.
The Domain Name incorporates the Complainant’s registered NATIONWIDE trademark in its entirety and adds two descriptive terms used in the insurance industry, “excess” and “surplus”. The addition of such terms does not avoid confusing similarity between the Domain Name and the Complainant’s trademark. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7.
The Panel finds, therefore, that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(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
(ii) that 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 or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant makes a prima facie case by demonstrating confusing similarity to its mark, an evident lack of rights or legitimate interests, and the Respondent’s use of the Domain Name for a PPC landing page advertising third-party and competing products. The Registrar/Respondent failed to submit a Response, and nothing in the record suggests that the Registrar/Respondent has rights or legitimate interests in the Domain Name.
The Panel concludes that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant demonstrates that the Domain Name was associated with a PPC landing page advertising third-party and competing insurance products before this dispute arose. This use is consistent with the illustration of misdirection for commercial gain in paragraph 4(b)(iv). It is undisputed that NATIONWIDE is a well-known and long-established trademark in the United States, where both of the parties are located, associated with a wide range of insurance products, and that “excess” and “surplus” are descriptive terms relating to insurance products, including those that the Complainant offers. The Registrar/Respondent did not come forward with a Response denying prior awareness of the Complainant’s trademark and offering a plausible, legitimate reason for registering the Domain Name, much less for using it more than two years for PPC advertising including advertising for competing products. The term “nationwide” is, a dictionary word, but combining it with words describing insurance services, especially those offered by the Complainant itself, strengthens the inference that the Domain Name was always meant to attack the Complainant’s mark.
As both the Registrar and the registrant, it can reasonably be assumed that the Respondent profited from the PPC use of the parked Domain Name and also stood to gain from any eventual sale of the Domain Name in the related domain name marketplace. In any event, as the registrant, the Respondent remains responsible for the lawful use of the Domain Name, as indicated in the Registrar’s own Registration Agreement:
“You may not use the Site or the Services … to violate the rights of any third parties, including, but not limited to, trademark, naming or publicity rights …”
The Respondent as a registrar and domain name manager should be well aware of these obligations, yet there are indications of a persistent carelessness in its approach to the trademark rights of others. The Panel notes that announcements on the Respondent’s website and blog since 2011, when it acquired the registrar operations of IntrustDomains, refer to the Respondent controlling a portfolio of tens of thousands of its own registered domain names and assisting customers in managing and listing hundreds of thousands of domain names. Certainly, some mistakes and legitimate disputes could be anticipated given such volume. But it is troubling that the Respondent and its CEO Mr. Monster have been respondents in UDRP proceedings that they have neither disputed nor settled, with a similar pattern of exploiting domain names that were found not to have been simply descriptive terms, and sometimes with indications of the use of fake registrant details or cyberflight or a suspiciously delayed registrar lock similar to the post-complaint conduct in the current proceeding. See, e.g., Jones Lang LaSalle IP, Inc. v. Domain Admin, Epik.com Private Registration / Brendan Waights, Biracay Ltd, WIPO Case No. D2017-1284 (transfer ordered, following PPC use of domain name; no response); France Billet v. Privacy Administrator, Anonymize, Inc., WIPO Case No. D2015-1641 (transfer ordered, following PPC use of domain name and cyberflight; no response); Legião Urbana Produções Artísticas Ltda. and Giuliano Manfredini v. Domain Admin, Epik.com Private Registration / Yoko Sayuri, WIPO Case No. D2013-1855 (transfer ordered, following PPC use; no response); Safra IP Holding CO v. Rob Monster, DigitalTown, Inc, WIPO Case No. D2018-1716 (transfer ordered, following parking and offering domain name for sale; no response); Jones Lang LaSalle IP, Inc. v. Rob Monster, DigitalTown, Inc., WIPO Case No. D2018-1299 (transfer ordered following redirect to registrant’s website and offer to sell domain name; no response); Dürr Aktiengesellschaft v. Rob Monster, Digital Town, Inc., WIPO Case No. D2018-0757 (transfer of all five disputed domain names ordered following use for parking site with offers to sell; no response); Oscar Studio di Cavallin Oscar and 5282 S.R.L v. Rob Monster, WIPO Case No. D2014-2257 (transfer ordered following PPC use; no response). The Panel considers that this history, along with the Respondent’s post-complaint conduct in this proceeding, further supports an inference of bad faith within the meaning of the Policy.
The Panel concludes that the third element of the Complaint, bad faith, has been established. The Panel also considers it appropriate that the Complainant raises the above to ICANN’s attention.
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 Domain Name <nationwidexcessandsurplus.com> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: October 10, 2019
LOL – I had to check the “This post is 100% true” banner two times.