Fireman's Fund Insurance Company v. John Horvitz
Claim Number: FA1004001320687
Complainant is Fireman's Fund Insurance Company (“Complainant”), represented by John
C. Cain, of Wong, Cabello, Lutsch, Rutherford &
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <firemansfundclaims.com> and <firemansfundinsuranceclaims.com> (“the disputed domain names”) both of which are registered with Godaddy.com, Inc (“Godaddy”).
The undersigned, David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 22, 2010.
On April 23, 2010, Godaddy.com, Inc confirmed by e-mail to the Forum that the domain names <firemansfundclaims.com> and <firemansfundinsuranceclaims.com> were registered with it and that the Respondent is the current registrant of the name. Godaddy.com Inc has verified that Respondent is bound by its 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 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org and email@example.com. Also on May 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 25, 2010.
Additional Submissions were received, from Complainant on May 27, 2010, and from Respondent on May 30, 2010. Both were deemed by the Forum to have been received in a timely manner according to the Forum’s Supplemental Rule 7.
On June 1, 2010 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Complainant requests that both of the disputed domain names be transferred from Respondent to Complainant.
Complainant asserts that it, its predecessors, and its related entities have offered insurance and insurance-related products and services under the name FIREMAN’S FUND since at least as early as 1896, and that this name has been extensively advertised. Complainant maintains that it has expended considerable effort and millions of US dollars in offering services and products under this name, thus acquiring substantial goodwill and common law rights in the mark.
In addition, Complainant has registered a number of relevant trademarks at the USPTO. Details of 11 trademark registrations were included in the Complaint all of which either consist of or contain the phrase FIREMAN’S FUND, and some also include the device of a fireman’s helmet. The earliest of these is No. 986,653 for the words FIREMAN’S FUND registered on June 18, 1974 for “Insurance underwriting services” in Class 36, claiming March 15, 1971 as its date of first use.
Complainant contends that the two disputed domain names, <firemansfundclaims.com> and <firemansfundinsuranceclaims.com> are confusingly similar to its trademark FIREMAN’S FUND, as they consist of this mark with the addition of only the generic words ‘insurance’ and/or ‘claims’, which merely describe the basic goods and services offered under its trademark FIREMAN’S FUND.
Complainant further contends that Respondent has no legitimate rights or interest in either of the disputed domain names because –
does not have prior rights in the disputed domain names – which were only
registered on March 27, 2010 – as Complainant’s FIREMAN’S FUND trademark has
been used at least as early as 1896 and has been registered in the
· Respondent is neither commonly known by the name FIREMAN’S FUND nor does it operate any other business or organization under this name.
· Both of the disputed domain names redirect a user to a third website operated by Respondent at the <www.catastrophe911.com> domain name. This is a portal site which, Complainant contends, directs visitors to sites of some of Complainant’s competitors. Complainant contends that this is not a bona fide offering of goods and services.
Complainant also contends that Respondent has registered and is using the disputed domain names in bad faith because –
· Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website thus creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website, and to divert users from Complainant’s website to its own. Respondent is thus trading on the goodwill associated with Complainant’s trademarks and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website with Complainant’s trademarks.
Respondent asserts that he operates two businesses. The first, under the name of Lesser & Company, is a private insurance adjuster. The second, under the name of All Phase Builder, Inc., is a state licensed construction company offering catastrophe re-construction estimating.
He contends that neither of these two companies compete in any way with Complainant, who receives no revenue source from either of these two services, and whose contract specifically puts the responsibility of providing the documenting and presenting of any claim on the insured. The sole purpose of Respondent’s two companies in offering their respective services is to ensure that an insured party receives a fair and just settlement of any loss.
Respondent contends as follows –
· The disputed domain names are not and never will be for sale;
· He does not try to redirect users from the Complainant’s website;
· He provides a link so that anyone finding his website in error may easily redirect to Complainant’s website;
· He does not sell insurance;
· His businesses are either claims adjusters who only settle claims, or contractors who write reconstruction estimates;
· He does not sell anything that Complainant sells, nor does he receive any revenues that would otherwise go to Complainant;
· He does not lead consumers to Complainant’s competitors;
· He does not trade on Complainant’s goodwill. Indeed, he contends that in fact he trades upon Complainant’s bad-will because when he entered “Fireman’s Fund Goodwill” on a search engine, there was only 1 hit in the first 5 pages that referred to Fireman’s Fund; all the others referred to a company called Goodwill Industries, Inc. Also, when he entered “Fireman’s Fund bad faith” there were 20,700 hits all referring to how Complainant had committed bad faith on behalf of their clients. When he entered “Fireman’s Find lawsuits”, there were 34,700 hits, almost all of which were about lawsuits against Complainant.
· The only way anyone could locate either of the two disputed domain names is if they are specifically looking for them.
· He does not advertise the disputed domain names in any way. When entering them on a search engine, neither of them appeared amongst the first 200 names on the first 20 pages.
Respondent states that when an insured person wishes to make a claim under his or her policy, they are initially told by their agent or insurance company to document the claim, to get some estimates, and to mitigate the damages. At this point the insured will look for help and turn to Respondent for it.
Respondent concludes by contending that he does have the right to use the disputed domain names, that he has not acted in bad faith and that if he is allowed to retain them he will continue to serve the public and to give them the information which they seek voluntarily without any intention of tricking or confusing the users in any way.
C. Additional Submissions
As noted above, both parties filed Additional Submissions.
Complainant accuses Respondent of faulty legal reasoning and of misconstruing a number of facts, contrary to the Policy.
Complainant reiterates that it has firmly established rights, including statutory rights, in its FIREMAN’S FUND trademark in accordance with the rules of the Policy, and that Respondent’s claim that it lacks goodwill is wrong.
Complainant submits that Respondent has admitted that it lacks rights or legitimate interests, by agreeing that Complainant’s rights are prior in time to the disputed domain names, and that Respondent is not known and has never been known by the name ‘Fireman’s Fund’.
Complainant further submits that Respondent’s arguments are no defence against its charge that he has acted in bad faith, pursuant to paragraph 4(a)(iii) of the Policy. In particular, by admitting that he is providing services that are directly related to the services that it provides, Respondent shows a clear desire to trade on Complainant’s goodwill by creating a likelihood of confusion among potential consumers who could believe that Respondent’s website is sponsored, approved , or otherwise affiliated with it.
Respondent‘s Additional Submission is an entertaining discourse on a number of subjects, not all of which directly address the issues in this matter, which are solely related to a Complaint under the Policy and its Rules. However, he does make two valid points.
The first is a charge of Reverse Domain Name Hijacking. Respondent likens this to the bullying which he claims occurs in a grade school. He then goes on to say that Complainant “has been an active user of the internet for over a decade, has billions of dollars in their control, teams of lawyers and the world’s finest marketing and branding companies at their disposal. They unilaterally have chosen not to secure the domain’s in this dispute shows that I in no way have registered these names with the intent to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name. Their lack of action, insight or just laziness is not my bad faith but it could be interpreted as theirs.”
The second point is that there cannot be any confusion between the disputed domain names because –
· Even if one were to enter into a search engine the wording ‘firemanfundclaims’ or ‘firemansfundinsuranceclaims’ with or without spaces between the words what would come up would be Complainant’s own website;
· If, however, one were to enter one of the two disputed domain names in the address bar, it would be because one was looking for someone other than Complainant’s actual home website;
· But if by any chance one were to actually find Respondent’s website, it contains, after the CATASTROPHE911.COM logo, a large statement in bold and in red that refers the visitor who has suffered a loss and wishing to hire a public adjuster to Respondent’s company Lesser & Company.
· It is ridiculous that anyone could be confused that Respondent’s site is that of Complainant or that it is sponsored, affiliated, or endorsed by it.
Complainant is a long-established
Respondent is an individual, but he operates two businesses, one as an insurance adjuster, and the other offers to estimate re-construction costs for clients wishing to make an insurance claim.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
Reverse Domain Name Hijacking
Respondent has accused
Complainant of ‘reverse domain name hijacking’. This is described in the
Rules as “using the Policy in bad faith
to attempt to deprive a registered domain-name holder of a domain name.” For example, it was
found in Labrada
Bodybuilding Nutrition, Inc. v
Respondent also accuses Complainant of persecuting him. However, the Panel can find no actual evidence in Complainant’s behaviour of this, of bad faith, or of either of the practices referred to in the above two Decisions.
The Panel therefore declines to find reverse domain name hijacking on the part of Complainant in these proceedings.
Respondent is not legally represented, and his Responses demonstrate that he is not familiar with the Rules and Procedure for domain name disputes. The Panel therefore wishes to explain that, in its opinion, the various Internet searches which Respondent has relied upon are not relevant in a dispute under the Policy. Using these searches, Respondent has argued that no one who finds his website, whether deliberately or by chance, could confuse it with, or believe that it belongs to, Complainant. But this is not the point. The Policy is concerned with confusion between names, not content, and by choosing to include in his names the name of Complainant, Respondent has broken the terms of the undertaking which he gave when registering them that they did not infringe upon or otherwise violate the rights of any third party.
Both of the disputed domain names contain Complainant’s registered trademark FIREMAN’S FUND in its entirety but without the apostrophe or the space between the words and with the addition of the words “claims”, “insurance”, and the generic top-level domain “.com.”
Complainant has established, to the satisfaction of the Panel, that it has substantial rights in the name and trademark FIREMAN’S FUND by virtue of a number of incontestable US trademark registrations which either consist of or contain this phrase. This is sufficient proof for, as the Panel said in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007): “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”
As for the punctuation, the spaces, and the additional words, it was held in LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum December 8, 2003) that the omission of an apostrophe did not significantly distinguish the domain name from the mark; while in American International Group, Inc. v. Domain Administration Ltd. c/o William Vaughan, FA 1106369 (Nat. Arb. Forum December 31, 2007) it was said that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names”; and in Daedong-USA, Inc Kioti Tractor Division. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum December 29, 2003) it was said that “Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”
It is also well established that if a domain name is merely the combination of a common word and a Complainant’s trademark, this is sufficient for a finding of confusing similarity. See, for example, V Secret Catalogue, Inc. v. Wig Distributions, FA301727 (Nat. Arb. Forum September 7, 2004) in which the Panel found that the domain name <victoriassecrethair.com> was confusingly similar to the trademark VICTORIA’S SECRET; see also Allianz of America Corporation v. Lane Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) in which it was found that the addition of the generic term ‘finance’ which described the Complainant’s business did not sufficiently distinguish the Respondent’s domain name from the Complainant’s trademark; and in The Gillette Co. v. RFK Associates, FA 492867 (Nat. Arb. Forum July 28, 2005) it was found that the domain name <duracellbatteries.com> was confusingly similar to the Complainant’s trademark DURACELL.
Consequently, on the basis of the above precedents, the Panel has no difficulty in finding that paragraph 4(a) (i) is proved in relation to both of Respondent’s domain names.
In fact, Respondent has not attempted to argue otherwise.
It is well established that, whilst the burden of proof rests with a Complainant, this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, for the burden to shift to Respondent to show it does have rights or legitimate interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006), and AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006).
It is clear to the Panel that in this case Complainant has indeed made out a prima facie case.
Paragraph 4(c) of the Policy sets out, in three paragraphs, three ways in which a Respondent may demonstrate that he does have rights to and a legitimate interest in a disputed domain name.
i. Bona Fide Use
Both of the disputed domain names resolve to a website located at the <catastrophe911.com> domain name where Respondent actually does offer two bona fide services, namely public insurance adjusting and catastrophe re-construction estimating. However, it is not Respondent himself who is offering these services but two companies, Lesser & Company and All Phase Builder Inc., which, he claims, help insured people to document and present their insurance claims to insurance companies and to provide estimates on catastrophe reconstruction, respectively. Respondent argues that these companies are not competitors of Complainant as they do not provide insurance, and neither of the services they offer is provided by Complainant. Complainant, on the other hand, states that these services are directly related to its own activities and is insistent that Respondent is in competition with Complainant. Given the lengthy list of insurance-related services offered by Complainant, it seems that this is more than likely.
In this case, as noted above, the use has been by two companies with names that have no relation to that of Respondent. They may be owned by, or connected with, or operated by, Respondent, or they may not. The Panel has not been told. However it follows from the wording of Paragraph 4(c)(i) that it is the Respondent himself who must have used the disputed domain name if he is to take advantage of a claim to have made bona fide use, and in this case he himself has not.
ii. Commonly Known
The disputed domain names are either <firemanfundclaims.com> or <firemansfundinsuranceclaim.com> but Respondent is a Mr. “John Horvitz”, a name which bears no relation to either of the disputed domain names, and that is the name by which he is, presumably, commonly known. It is clear, therefore, that this paragraph too is of no use to him in contesting Complainant’s charge that he has no rights or legitimate interest in the disputed domain names.
iii. Legitimate Non-commercial or Fair Use
There is nothing in either of Respondent’s submissions to suggest that he has made a legitimate non-commercial use of either of the disputed domain names. He alleges that his use is fair, but what is fair about adopting someone else’s name in order to conduct one’s own business?
Taking all of the above into consideration, the Panel has concluded that paragraph 4(a)(ii) has also been proved.
Complainant alleges that Respondent had constructive knowledge of Complainant’s trademark FIREMAN’S FUND, as well as its well-known reputation, when Respondent registered the disputed domain names. Constructive knowledge has not generally been held sufficient to support a finding of bad faith, and indeed Respondent states, quite correctly, that “Knowledge of the mark does not indicate bad faith”. However one has to question why Respondent chose to use the name of Complainant as part of his domain names. He could have relied solely on his existing domain name <catastrophe911.com>, he could have used the names of his two companies—<lesserandcompany.com> or <allphasebuilder.com>—but no, he chose to use the name of the Complainant. And why stop there? Perhaps he has registered the name of other insurance companies in a similar fashion?
It is clear from the Response that Respondent has knowledge of the wording and contents of one of Complainant’s insurance policies. He was therefore fully aware of Complainant when registering the disputed domain names and, although he may not have been aware that the domain names incorporated marks in which Complainant had rights, he could have suspected as much. Therefore, when Respondent registered and used the disputed domain names, he did so in bad faith. See, for example, the cases of Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum December 16, 2002) in which the Panel found bad faith where the method by which Respondent acquired the disputed domain names indicated that he was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum December 16, 2006) in which bad faith was found where the respondent was “well-aware” of the complainant’s YAHOO! Mark at the time of registration; see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum September 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); see also Household International, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum November 7, 2000) in which it was said that “Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner… ”.
Consequently, the Panel finds that Respondent has acted in bad faith and that paragraph 4(a)(iii) has been proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firemansfundclaims.com> and <firemansfundinsuranceclaims.com> domain names be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: June 11, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum