A one member UDRP panel refused Nationwide Insurance Company bid to grab three domain names containing the word “nationwide”
The three domains at issues were; The Respondent registered the disputed domain name nationwideautolending.com on January 5, 2006, nationwideautoapproval.com on April 3, 2006, and nationwideautocredit.com on November 18, 2010.
Two of the three domains resolve to active websites that offer online auto loan application and approval services, said to involve a network of lenders and dealers throughout the United States that can providing financing for individuals with bad or no credit.
The disputed domain name nationwideautoapproval.com currently does not resolve to an active website.
Here are the revlevant facts and findings by the one member panel of William R. Towns:
“The Complainant sent a cease-and-desist letter to the Respondent on or about June 17, 2013, regarding the disputed domain name .1 The Respondent replied, declining to discontinue use of the disputed domain name, but subsequently added a disclaimer to the nationwidelending.com website. The Complainant sent a second cease-and-desist letter in August, 2013, to which it appears the Respondent did not offer a reply.
The Complainant maintains that the disputed domain names are confusingly similar to its NATIONWIDE mark, as each of the disputed domain names incorporates the Complainant’s mark in its entirety. The Complainant submits that it is widely known in the insurance and financial services industry, and that the Complainant and its licensed affiliates and subsidiaries have engaged in the business of providing numerous types of insurance and financial services throughout the United States for 88 years, the last 59 years of which have been under the NATIONWIDE mark. The Complainant asserts that the addition of generic terms such as “auto lending”, “auto approval”, and “auto credit” do not serve to distinguish the disputed domain names from the Complainant’s mark. According to the Complainant, its NATIONWIDE marks are among the most recognized, valued and famous marks in the insurance and financial services industry, and the Complainant maintains strict control over the use of the NATIONWIDE marks. The Complainant asserts that the distinctiveness and fame of the Complainant’s NATIONWIDE marks has been recognized in prior decisions under the UDRP.2
To the contrary, the Complainant contends that the Respondent is attempting to pass off the active websites to which the disputed domain names resolve as affiliated with the Complainant. The Complainant submits that the Respondent’s websites offer referrals to third party auto and auto loan services. The Complainant describes the services offered by the Respondent as lead generation services to third parties that compete directly with auto financing and loan services offered by the Complainant under its NATIONWIDE marks.
In light of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain names to profit from and trade off the Complainant’s goodwill and divert to the Respondent’s active websites Internet traffic rightly intended for the Complainant to its competitors. The Complainant submits that such use does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names within the meaning of the Policy. The Complainant further asserts that the posting of a disclaimer on the Respondent’s nationwideautolending.com website only after receipt of the Complainant’s cease-and-desist letter is evidence of bad faith.
The Respondent categorically denies all claims and accusations by the Complainant that he registered or is using the disputed domain names in bad faith. The Respondent submits that he chose the disputed domain names because they are generic in nature and accurately describe the Respondent’s business.
The Respondent maintains his business provides assistance to subprime credit customers through local dealers and lenders in all 50 US states. According to the Respondent, he started his business upon registering the disputed domain name in January 2006, and had absolutely no knowledge that the Respondent was using the NATIONWIDE mark with auto loans or auto financing. The Respondent submits that it was not until being contacted by the Complainant in 2013 that he had any idea that the Complainant provided auto loans.
The Respondent further submits that he began using the disputed domain names and almost two years before the Complainant begin making auto loans.
The Respondent, relying on archived records of the Complainant’s natiowide.com website available at “www.archive.org” (commonly known as the Internet Archive), contends that the Complainant did not begin making auto loans until sometime in 2007, following the Complainant’s creation of Nationwide Bank.
The Respondent maintains that he made clear when contacted by the Complainant in 2013 that the disputed domain names were selected because they are generic and accurately describe the Respondent’s business.
The Respondent maintains there are a number of other companies that are making a similar generic or descriptive use of the term “nationwide” in connection with auto loans and auto financing, including Nationwide Auto Finance, LLC (“www.nationwidetoledo.com”), in business in Ohio since 2002; and Nationwide Loans (“www.nac-loans.com”), a Chicago, Illinois based business that, according to the Respondent, has been making subprime auto loans since 1954, and currently operates in 24 states. The Respondent observes that these companies, like the Respondent, are making generic or descriptive uses of the term “nationwide” and began doing so before the Complainant begin making auto loans through Nationwide Bank. The Respondent further points to third-party registrations of nationwide-formative domain names used in connection with various other goods and services
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s NATIONWIDE mark
In this instance, each of the disputed domain names incorporates the Complainant’s NATIONWIDE mark in its entirety, and the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain names to the Complainant’s NATIONWIDE mark is not overcome merely by the addition of descriptive terms such as “auto lending”, “auto approval”, and “auto credit”.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Respondent asserts that he has established rights or legitimate interests in the disputed domain names based on making a good faith, descriptive use of the disputed domain names prior to any notice of this dispute. The Respondent avers this was his intention when registering the disputed domain names, and that the tem “nationwide” as incorporated in the disputed domain names is being used in keeping with its dictionary meaning and not in the trademark sense. The Respondent claims to have so informed the Complainant when first notified of this dispute by the Complainant in June 2013, at which time, by the account of both parties, he informed the Complainant he had no intention of relinquishing the disputed domain names used with his business since as early as January 2006.
A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware of the complainant’s trademark rights or believed in good faith that such use would not violate the complainant’s rights. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424.
Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest.
The Panel considers that the word “nationwide”, when used in its commonly understood or dictionary meaning, is descriptive or laudatory in nature.
It is this descriptive quality of the term “nationwide” that the Respondent maintains is why the disputed domain names were registered for use with his business. The Panel notes that Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.
The Panel is inclined to accept that the Respondent would have been aware of the Complainant and the Complainant’s NATIONWIDE mark when registering the disputed domain names. However, as the decisions referred to above indicate, in cases where a respondent makes a plausible claim of descriptive use, the dispositive question is not necessarily limited to whether the respondent was aware of the complainant’s trademark rights, although such knowledge clearly is a relevant consideration.
The larger question as framed in these decisions is whether, in light of the totality of facts and circumstances of a given case, it has been demonstrated that the respondent’s real aim was to exploit and profit from another’s mark.
Given the foregoing, and in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain names in bad faith.
Notwithstanding the acknowledged strength and reputation of the Complainant’s NATIONWIDE mark, a plausible good faith basis for the Respondent’s registration of the disputed domain names has been asserted (and not rebutted), and a sufficient showing has not been made that the Respondent’s proffered explanation more likely than not is a pretext, or that the Respondent’s objective in registering the disputed domain names more likely than not was cybersquatting.
As noted earlier, the Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.
At the time of the registration of the disputed domain names, the Complainant’s historic use of the NATIONWIDE mark entailed various insurance and financial services.
The financial services claimed in the Complainant’s trademark registrations, at least prior to registration of the NATIONWIDE BANK mark in October, 2007, related to brokering and distribution of mutual funds, money market funds, pension plans, IRA plans, annuities, stocks and bonds, and mortgage lending. The Complainant has asserted common law rights in the NATIONWIDE mark for auto loans dating back to 1983, but on balance and based on the limited evidence normally permitted under the Policy, the Panel finds this assertion insufficiently convincing. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.
It would appear from the documents, however, that such loans were available only to members of the credit union and equally, it is not clear to what extent the credit union advertisements were directed to or seen by the general public.
The Complainant’s asserts that it maintains strict control of the NATIONWIDE marks, but the Panel notes that it nonetheless did not object to the Respondent’s registration and use of the disputed domain names until June 2013.
This Panel, in accord with other UDRP panels, generally has declined to apply the doctrine of laches in proceedings under the Policy.
The Panel nonetheless recognizes that lengthy delays in seeking legal or administrative remedies can have the effect of eroding the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent’s alleged bad faith in registering and using a domain name.
Accordingly, for the reasons summarized above, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.