Fireman's Fund Insurance Company v. Shen Kaixin
Claim Number: FA0901001243084
Complainant is Fireman's Fund Insurance Company (“Complainant”), represented by Gretchen
McCord Hoffman, of Wong Cabello, Lutsch, Rutherford &
Brucculeri, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <firemansfundinsurance.com>, registered with Udomainname.com LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 11, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <firemansfundinsurance.com> domain name is confusingly similar to Complainant’s FIREMAN’S FUND mark.
2. Respondent does not have any rights or legitimate interests in the <firemansfundinsurance.com> domain name.
3. Respondent registered and used the <firemansfundinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fireman's Fund
Insurance Company, hold several registrations of the FIREMAN’S FUND mark
with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No.
986,653 issued
Respondent registered the <firemansfundinsurance.com>
domain name on
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 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. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant has established rights in
the FIREMAN’S FUND mark under Policy ¶ 4(a)(i) by
virtue of its registration with the USPTO.
See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
The <firemansfundinsurance.com>
domain name is composed of Complainant’s FIREMAN’S FUND mark without the
apostrophe, but adds the generic word “insurance,” and the generic top-level
domain (gTLD) “.com.” The Panel finds
that using Complainant’s mark results in confusing similarity under Policy ¶
4(a)(i).
Omitting the apostrophe, adding a generic word which describes products
and services offered by Complainant, and adding a gTLD cannot overcome this
confusing similarity. See Mrs. World Pageants, Inc. v. Crown
Promotions, FA 94321 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. If the Panel finds
that Complainant’s allegations establish such a prima facie case, the
burden shifts to Respondent to show that it does indeed have rights or
legitimate interests in the disputed domain name pursuant to the guidelines in
Policy ¶ 4(c). Since no response was
submitted in this case, the Panel may presume that Respondent has no rights or
legitimate interests in the disputed domain name. The Panel finds that Complainant’s
allegations are sufficient to establish a prima
facie case that Respondent has no rights or legitimate interests in the <firemansfundinsurance.com> domain
name pursuant to Policy ¶ 4(a)(ii). However,
the Panel will still examine the record in consideration of the factors listed
in Policy ¶ 4(c). See Domtar, Inc. v.
Theriault.,
FA 1089426 (Nat. Arb. Forum
There is no evidence in the record to suggest that
Respondent is commonly known by the <firemansfundinsurance.com>
domain name. Complainant asserts it has
not granted Respondent any license to use its FIREMAN’S FUND mark, and the WHOIS information associated with the
domain name registration lists Respondent as “Shen
Kaixin.” Also, Respondent has not
submitted any evidence that it is commonly known by the disputed domain
name. Therefore, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum
Respondent may also prove it has rights or legitimate
interests in the disputed domain name by showing it is being used in connection
with a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name is being used to
direct Internet users to a parking website with a list of links to third-party
websites that presumably generate referral fees for Respondent. Using a domain name that is confusingly
similar to Complainant’s mark to direct Internet users to a commercial list of
links is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds Respondent does
not have any rights or legitimate interests in the disputed domain name
pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <firemansfundinsurance.com>
domain name to resolve to a website that contains links for third-party
websites. Some of these links directly
compete with Complainant. The Panel
finds Respondent is using the <firemansfundinsurance.com>
domain name to divert Internet users to Complainant’s competitors. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO
The website that resolves from the <firemansfundinsurance.com> domain
name displays advertisements and links to sites that are both related and
unrelated to Complainant’s FIREMAN’S FUND mark.
The Panel infers that Respondent receives pay-per-click fees for these
links and advertisements. Since the
disputed domain name is confusingly similar to Complainant’s mark, Internet
users are likely to become confused as to Complainant’s affiliation or
sponsorship of the disputed domain name and resolving website. Respondent is seeking to profit from this
confusion by hosting pay-per-click advertising on the resolving website. The Panel finds this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firemansfundinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 24, 2009
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