Farmers Group, Inc. v. ThomBra Enterprises a/k/a Thomas Lease and Brandy Lease
Claim Number: FA0205000114352
Complainant is Farmers Group, Inc., Los Angeles, CA (“Complainant”) represented by Melanye K. Johnson, of Arent Fox Kintner Plotkin & Kahn PLLC. Respondent is ThomBra Enterprises a/k/a Thomas Lease and Brandy Lease, Roanoke, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <farmersinsuranceexchange.com>, registered with Verisign, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 28, 2002.
On May 22, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the domain name <farmersinsuranceexchange.com> is registered with Verisign, Inc. and that Respondent is the current registrant of the name. Verisign, Inc. has verified that Respondent is bound by the Verisign, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
On July 9, 2002, the Forum received a Response. Respondent contended that the Complainant served no Complainant upon Respondent until July 3, 2002. Complainant certified that the Complainant was served upon Respondent on May 20, 2002. Respondent did not contest the fact that the Forum sent Respondent a Notification of Complaint and Commencement of Administrative proceedings setting the Response deadline at June 18, 2002. No request was made under the provisions of Rule 5(d) of the Rules for Uniform Domain Name Dispute Resolution Policy to the Forum to extend the period of time for the filing of the Response. Respondent is required to file a Response with the Forum within twenty (20) days of commencement of the administrative proceeding. Rule 5(a). If a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Rule 5(e). The only circumstance cited by Respondent is contained in an e-mail to the Forum dated July 9, 2002 stating that “Well, it took a while to figure out what to do, but here is our best.” The Panel fails to find this statement to constitute an exceptional circumstance. To be sure that the spirit of Rule 10(b) of the Rules is followed, the Panel reviewed the late Response and determined that even if considered, the contents and contentions contained therein would not change the result to a favorable one for Respondent. After consideration of the file in this proceeding, it is the decision of the Panel that this case be considered as a Default under the provisions of Rule 14(a).
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <farmersinsuranceexchange.com> domain name is identical to Complainant’s FARMERS INSURANCE EXCHANGE mark.
Respondent has no rights or legitimate interests in the <farmersinsuranceexchange.com> domain name.
Respondent registered and used the <farmersinsuranceexchange.com> domain name in bad faith.
Respondent failed to submit a timely Response in this proceeding.
Complainant owns a registered trademark with the United States Patent and Trademark Office for FARMERS INSURANCE EXCHANGE (Reg. No. 1,920,139). Complainant uses the FARMERS INSURANCE EXCHANGE mark in connection with property, casualty and automobile insurance agency services, among other services.
Complainant operates a website at <farmers.com>, where it conducts insurance and financial services. At this website, Complainant extensively uses the FARMERS INSURANCE EXCHANGE mark to promote its services.
Complainant has spent millions of dollars in promoting its FARMERS INSURANCE EXCHANGE mark. Complainant’s efforts resulted in its business blossoming into one of the largest insurance and financial service providers in the world. Complainant has over fifteen million customers. Complainant’s efforts to expose its FARMERS INSURANCE EXCHANGE mark has resulted in worldwide notoriety of the mark.
Respondent was denied an insurance claim with Complainant and subsequently registered the <farmersinsuranceexchange.com> domain name on February 21, 2002. Complainant never licensed or authorized Respondent to use its FARMERS INSURANCE EXCHANGE mark.
Respondent first used the <farmerinsuranceexchange.com> domain name to link to a website at <mybabiesfirstphoto.com>. Subsequently and currently, Respondent uses the domain name to link to a website at <youreontheshitlist.com>. At this website, Respondent provides text that states “DO NOT INSURE WITH FARMERS.”
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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 has established its rights to the FARMERS INSURANCE EXCHANGE mark through registration on the Principal Register with the United States Patent and Trademark Office.
Respondent’s <farmersinsuranceexchange.com> contains Complainant’s entire FARMERS INSURANCE EXCHANGE mark absent the spaces. However, spaces are impermissible in domain names. Therefore, Respondent’s domain name is identical to Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume Respondent has no such rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent uses the <farmersinsuranceexchange.com> domain name to link to a website at <youreontheshitlist.com>. At this website, Respondent complains about an insurance claim denied by Complainant. The website contains the message “DO NOT INSURE WITH FARMERS.” Hence, Respondent uses Complainant’s FARMERS INSURANCE EXCHANGE mark to divert Internet traffic to its website in order to tarnish Complainant’s established reputation. Respondent’s use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark).
Respondent was never authorized or licensed to use Complainant’s FARMERS INSURANCE EXCHANGE mark. Respondent is only known by this Panel as ThomBra Enterprises or Thomas Lease and Brandy Lease. Respondent is not commonly known by FARMERS INSURANCE EXCHANGE or <farmersinsuranceexchange.com>. Respondent has no business affiliation with Complainant; rather, Respondent is illegitimately using Complainant’s mark in retaliation for a denied insurance claim. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Due to Respondent’s use of the <farmersinsuranceexchange.com> domain name as a website strictly designed to protest Complainant’s services and tarnish Complainant’s reputation, it is clear that Respondent was well aware of Complainant’s rights in the FARMERS INSURANCE EXCHANGE mark upon registering the domain name. Therefore, Respondent’s registration of the domain name, despite knowledge of Complainant’s rights in the FARMERS INSURANCE EXCHANGE mark, constitutes bad faith under Policy ¶ 4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).
Respondent specifically uses Complainant’s entire mark in an attempt to try to reach and discourage as many of Complainant’s potential customers as possible, thereby damaging the goodwill Complainant has built up in its mark. Such use of Complainant’s mark in its entirety constitutes bad faith use of the domain name under Policy ¶ 4(a)(iii). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <farmersinsuranceexchange.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 12, 2002.
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