American Farm Bureau Federation v. Private Registration - bmon
Claim Number: FA1008001338884
Complainant is American Farm Bureau Federation (“Complainant”), represented by Richard
A. Flynt, of Roylance, Abrams, Berdo & Goodman,
L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <farmbureaufinancial.com>, registered with BARGIN REGISTER, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2010.
On August 4, 2010, BARGIN REGISTER, INC. confirmed by e-mail to the National Arbitration Forum that the <farmbureaufinancial.com> domain name is registered with BARGIN REGISTER, INC. and that Respondent is the current registrant of the name. BARGIN REGISTER, INC. has verified that Respondent is bound by the BARGIN REGISTER, 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 August 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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 postmaster@farmbureaufinancial.com by e-mail. Also on August 5, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant offers financial
and insurance services to farmers in the
Complainant owns
registrations with the United States Patent and Trademark Office
("USPTO") for its FARM BUREAU service mark (including Reg. No. 2,513,062,
issued November 27, 2001).
Respondent registered the disputed <farmbureaufinancial.com> domain name on October 6, 2005.
Respondent’s domain name resolves to a website displaying links to insurance and financial services companies in competition with the business of Complainant, and Respondent receives click-through fees from those businesses.
Respondent’s <farmbureaufinancial.com> domain name is confusingly similar to Complainant’s FARM BUREAU mark.
Respondent is not commonly known by the disputed domain name, and Respondent is not licensed or otherwise authorized to use Complainant’s FARM BUREAU mark.
Respondent does not have any rights to or legitimate interests in the domain name <farmbureaufinancial.com>.
Respondent registered and uses the disputed <farmbureaufinancial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its FARM BUREAU mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant
has established rights in the … mark through registration of the mark with the
USPTO.
See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether a complainant has registered its trademark in the
country of a respondent’s residence, it being sufficient that a complainant has
established rights in its mark in some jurisdiction).
Respondent’s <farmbureaufinancial.com> domain name is confusingly similar to Complainant’s FARM BUREAU mark under Policy ¶ 4(a)(i). The domain name contains the mark in its entirety, absent the space between the terms of the mark, while adding the descriptive term “financial” and the generic top-level domain (“gTLD”) “.com.” These changes are not sufficient to render the domain name distinct from Complainant’s mark under the Policy. Accordingly, Respondent’s disputed domain name is confusingly similar to Complainant’s FARM BUREAU mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are
impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in all domain
names. Therefore, the panel finds that
the disputed domain name is confusingly similar to the complainant’s mark.
See also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained a complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); further see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights to or legitimate interests in the <farmbureaufinancial.com> domain name. Complainant is required to establish a prima facie case in support of such contentions in order to shift the burden of proof to Respondent to show that it possesses rights to or legitimate interests in the domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name.
Complainant has produced a prima facie case to support its allegations under this head of the Policy, and the burden of proof has therefore been transferred to Respondent. Owing to Respondent’s failure to respond to the Complaint filed in these proceedings, we may presume that Respondent does not have rights to or legitimate interest in the contested <farmbureaufinancial.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). We will nonetheless examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name and that Respondent is not licensed or otherwise authorized to use Complainant’s FARM BUREAU mark. Moreover, the WHOIS information for the <farmbureaufinancial.com> domain name identifies the registrant only as “Private Registration – bmon,” which does not resemble the contested domain name. On this record, we must conlcude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain name recognized under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the domain name <emitmortgage.com> where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the domain name, and where a complainant alleged that it did not authorize or license that respondent’s use of its mark in a domain name).
We also note that there is no dispute as to Complainant’s
assertions that Respondent’s <farmbureaufinancial.com>
domain name resolves to a website displaying links that divert Internet users
to the websites of Complainant’s business competitors and that Respondent
receives click-through fees from those businesses. This use of the contested domain name is
evidence that Respondent lacks rights to or legitimate interests in the
disputed domain name because it is not a use 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). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also Wal-Mart
Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s
use of domain names confusingly similar to a complainant’s WAL-MART mark to
divert Internet users seeking that complainant’s goods and services to websites
competing with the business of that complainant did not constitute 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 Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s official website to Respondent’s website creates a disruption of Complainant’s business and is therefore evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This
Panel concludes that by redirecting Internet users seeking information on
Complainant’s educational institution to competing websites, Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also David Hall Rare Coins v.
Respondent’s use of the <farmbureaufinancial.com> domain name to attract Internet users to Respondent’s website for commercial gain is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Respondent’s domain name, because it is confusingly similar to Complainant’s mark, creates a likelihood of confusion between the disputed domain name and Complainant’s FARM BUREAU mark, and Respondent seeks to capitalize on that likelihood by making money on click-through fees paid by businesses in competition with Complainant that are displayed on Respondent’s website. This use is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites offering services similar to those offered by that complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <farmbureaufinancial.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 20, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum