Panelist ruled in favor of Italian registrant who hasn’t started using domain name.
A company that provides health insurance plans in the United States tried to reverse hijack a domain name, a UDRP panelist has ruled.
Centene Corporation, which offers health plans under the Fidelis Care brand, filed a dispute against fidelisinsurancecompany.com. The domain was registered earlier this year by a person in Italy and does not resolve to a website.
Although the registrant did not respond, panelist Alan L. Limbury found that Centene did not show the domain was registered and used in bad faith.
Limbury noted that fidelis is Latin for “faithful” and that many companies use the brand. A search of the USPTO database shows thir…
Panelist ruled in favor of Italian registrant who hasn’t started using domain name.
A company that provides health insurance plans in the United States tried to reverse hijack a domain name, a UDRP panelist has ruled.
Centene Corporation, which offers health plans under the Fidelis Care brand, filed a dispute against fidelisinsurancecompany.com. The domain was registered earlier this year by a person in Italy and does not resolve to a website.
Although the registrant did not respond, panelist Alan L. Limbury found that Centene did not show the domain was registered and used in bad faith.
Limbury noted that fidelis is Latin for “faithful” and that many companies use the brand. A search of the USPTO database shows third-party marks for fidelis for charitable services, bourbon, dietary supplements for dogs, bandanas, shower caps, musical instruments, and window blinds.
He determined:
…it is possible to conceive of many plausible and actual good faith uses of the fidelisinsurancecompany.com domain name that would not infringe Complainant’s rights. The Panel does not accept Complainant’s submission that the added descriptive and generic terms “insurance company” limits the probable uses of the domain name to services ancillary to those associated with Complainant’s FIDELIS marks, namely, “Administration of health care plans”.
Limbury also said that Centene presented no evidence to support its claim that its marks have been used in countries other than the United States.
Overall, he said he was not persuaded that the registrant in Italy was aware of the Complainant’s marks when registering the domain.
In finding reverse domain name hijacking, Limbury wrote:
The Panel finds that, through its Counsel, Complainant must have been aware of the Latin dictionary word “fidelis”, meaning “faithful”, and its use by others in many United States trademarks. Complainant cited passive holding cases which noted the importance of showing that the mark in question is famous or well-known, yet provided no such evidence in relation to any of its marks.
Further, Complainant failed to provide any evidence of its claimed use of its trademarks outside the United States, such as to show a likelihood that Respondent, in Italy, was likely aware of Complainant’s marks when registering the domain name and did so with intent to trade off the reputation of Complainant’s marks.
I think Limbury is correct that Centene didn’t show that the registrant had Centene’s marks in mind when registering the domain. That said, I can understand why Centene was alarmed by this registration since it offers health insurance services.
Armstrong Teasdale LLP represented the Complainant.
About Andrew Allemann
Andrew Allemann has been registering domains for over 25 years and publishing Domain Name Wire since 2005. He has been quoted about his expertise in domain names by The Wall Street Journal, New York Times, and NPR. Connect with Andrew: LinkedIn - Twitter/X - Facebook
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