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Recent Case Notes & Commentary

A VENDETTA DOES NOT PAY. ANOTHER SUCCESSFUL USE OF OKI DATA

Country Mutual Insurance Company and Country Life Insurance Company v. Harris Claims Services


FORUM Claim Number: FA2308002057978


October 2, 2023


RATIO


If a Complainant fails to satisfy all the three elements under Paragraph 4(a) of the UDRP, being (i) domain name of Respondent is identical or confusingly similar to the trademark of the Complainant, (ii) that the Respondent has no right or legitimate interest in the domain name, and (iii) that the domain name has been registered and is being used in bad faith, the claim will not succeed. Failure to establish even one of these elements will defeat the claim.


Moreover, nominative fair use may be a good defence for a Respondent under Oki Data if the facts support it.


Also, complaints deliberately brought in bad faith or to harass the Respondent domain name holder can lead to findings of Reverse Domain Name Hijacking.


BACKGROUND


Country Mutual Insurance Company and Country Life Insurance Company have jointly owned the trade mark COUNTRY COMPANIES with the United States Patent and Trademark Office (‘USPTO’) since 1970. The Complainant started its operations in 1925 and since then has been in the business of offering various kinds of insurance to people in the USA. In addition to the aforementioned trademark, the Complainant also offers it services through its domain names <countrycompanies.com> and <countryfinancial.com>.


Harris Claims Services (the ‘Respondent’) is a public adjusting company whose business involves negotiating and adjusting claims against insurance companies such as the Complainant. It claims to have been in business for decades, that the Complainant is aware of this and that it is an adversary of the Complainant and not its competitor. The Respondent also provides contracting and repair services.


For the purpose of its insurance claim adjustment services, the Respondent registered the domain name <countrycompaniesinsuranceclaimsajusting.com> through which it seeks to represent users who are being treated unfairly by the Complainant and need claims adjustment services. The website includes differentiating language "WE ARE PUBLIC INSURANCE ADJUSTERS WHO HAVE BEEN FIGHTING COUNTRY MUTUAL INSURANCE COMPANY AND ADJUSTING FIRE AND WATER CLAIMS FOR OVER TWENTY YEARS!!!"


The Complainant brought this claim against the Respondent in relation to the domain name <countrycompaniesinsuranceclaimsajusting.com>, which it claims is confusingly similar to its trademark COUNTRY COMPANIES, as domain name wholly contains COUNTRY COMPANIES and adds the descriptive phrase "insurance claims ajusting" – with a typographical error for the term "adjusting." According to the Complainant, the domain name is bound to cause confusion and deception in the minds of members of trade and consumers who will associate it with the Complainant and will be tricked into availing the services of the Respondent believing them to be originating from the Complainant and as being used for selling insurance, just like the Complainant.


The Complainant claims that the Respondent is in the same business as the Complainant and that links from the domain name refer to Respondent's offerings of insurance adjustment services with respect to some third-party insurance companies, and that those uses are neither a "bona fide offering of goods or services" per Policy ¶ 4(c)(i), nor a "legitimate non-commercial or fair use" per Policy ¶ 4(c)(iii). Moreover, it says that the Respondent is not commonly known by the disputed domain name, and hence Policy ¶ 4(c)(ii) fails to apply as well. The Complainant claims that the Respondent is trying to corner the market by blocking the Complainant’s registration of some domain names relating to its service marks and by registration of domain names that infringe on the marks of third-party insurance companies. The Complainant has used the term "combosquatting" to describe the Respondent’s actions, which is essentially "cybersquatting" where a valid mark is placed in combination with generic keywords in order to drive internet user traffic to Respondent's website.


The Respondent submitted that the disputed domain name is not confusingly similar to any of Complainant's marks, because the website clearly states that it is owned by the Respondent to provide services in adjusting insurance claims brought against the Complainant, which is a legitimate business operation for which the domain name is being used and not for selling insurance.


So, the Respondent claimed that it was entitled to use the domain name for adjusting insurance claims against the Complainant. In other words, it claimed that it was making a nominative fair use of the Complainant’s trademark; it was nominative because it actually named the Complainant’s trademark for COUNTRY COMPANIES, but it was legitimate because it was fair.


Moreover, it argued that not only was it entitled to the domain name but the Complainant had acted improperly by bringing the claim at all; it was therefore guilty of Reverse Domain Name Hijacking (“RDNH”). It argued that the Complainant was well aware of Respondent's business,


and should not have brought the claim as Respondent has adjusted claims against Complainant for decades. The Complainant had therefore filed the Complaint to restrict the Respondent's legitimate representation of claimants against the Complainant and that it, the Complainant, deserved a finding of RDNH being made against it.


DECISION


The Panelist reviewed the matter and relied on Paragraph 4(a) of the UDRP to decide the dispute.

Identical and/or confusingly similar


The Panel first found that the domain name <countrycompaniesinsuranceclaimsajusting.com> was confusingly similar to the Complainant’s registered trademark COUNTRY COMPANIES. This was because the added generic term "insurance claims ajusting" related directly to Complainant's insurance business operations, making the domain name confusingly similar to the trademark. In other words, the Panel relied on the dominant effect of trademark itself as well as some prior UDRP decisions that it said were similar.


The Complainant had thus won on Round 1. However, as we will now see, it was a different story when it came to Round 2,

Rights or legitimate interests


The Panel found that the Respondent had a right or legitimate interest in the domain name. That was because the Respondent was offering insurance claim adjusting services and that made it not a competitor of Complainant, but a legitimate adversary, in seeking to alter insurance claims in favor of Complainant's clients and against Complainant's monetary interests.


Moreover, the Panel found that the contracting and repair services offered by the Respondent were simply a relevant and complementary part of insurance claim adjusting, and not a separate business operation it conducted. It could not therefore be said that it was in competition with the Complainant.


Further, it found that the Complainant was unable to provide sufficient evidence that the Respondent was trying to deceive internet users with respect to its offerings, since the website connected to the domain name made it clear that the Complainant was an adversary of the Complainant and not a competitor. Moreover, the Complainant was already the independent owner of the domain names <countrycompanies.com> and <countryfinancial.com>. The Respondent was therefore not combosquatting.


Accordingly, the Complainant had failed to demonstrate that the Respondent had no rights or legitimate interests in the disputed domain name.


Reliance on Oki Data


An important aspect of the case was that the Panelist relied on the well-known decision in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). That decision had found that the UDRP Policy does not necessarily prohibit the inclusion of another party's valid trademark in a disputed domain name in all situations, which was what the Respondent had done by including the Complainant’s COUNTRY COMPANIES trademark in its domain name. In other words, Oki Data was a successful use of the defence of nominative fair use and so also was the present case.


To analyse the possible merits of nominative fair use in those circumstances, Oki Data had put forward these tests:

(i) The domain name owner (the Respondent domain name holder) must actually be offering the goods or services at issue;

(ii) It must also use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods or services;

(iii) Its website must have accurately disclosed the domain name registrant's relationship with the trademark owner; it could not, for example, falsely suggest that it was the trademark owner itself, or that the website was its official site if, in fact, it is only one of many sales agents; and

(iv) It must not try to corner the market in all domain names, thus depriving the owner of reflecting its own mark in a domain name.


The Respondent domain name holder had met these tests and could therefore rely on nominative fair use to give it a right or legitimate interest in the domain name.


The Respondent had thus won Round 2 with this successful use of the decision in Oki Data.But what about Round 3?


Registration and Use in Bad Faith


Finally, the Panel found that since the Complainant had not proven the second element as set out in Paragraph 4(a) of the UDRP, it was not required to consider the third element, the bad faith element under the policy.


Having failed two out of the three elements required to be proved under in Paragraph 4(a) of the UDRP, the Complainant’s domain dispute claim was defeated and the Respondent was able to keep the domain name.


REVERSE DOMAIN NAME HIJACKING


The Panelist further concluded that the present action was brought by the Complainant in bad faith to harass the Respondent under UDRP Rules ¶ 15(e) and that the Complainant was therefore guilty of RDNH. This was because the Complainant was clearly aware of the Respondent and its business. The two parties been adversaries for a while, but that fact was not disclosed by the Complainant in its complaint.


Also, the Complainant was aware that the Respondent was engaged in providing legitimate insurance claim adjustment services under the disputed domain name. Relying on the decision in United Services Automobile Association v. Harris Claims Service, FA 2007801 (Forum Sept. 27, 2022), the Panelist came to the conclusion that the Complainant had engaged in RDNH.


Therefore, it appears that one must be cautious when bringing a domain name claim and have a legitimate grievance before making the claim. In the present case, it looked as if the Complainant had brought the claim as part of a vendetta against the Respondent : a reactionary action stemming from a vendetta does not pay.


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Browse through the other decisions on the Oki Data case that have been discussed on Domain Times.


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