Fireman's Fund Insurance Company v. Steve Schwartz
Claim Number: FA1010001355350
Complainant is Fireman's Fund Insurance Company (“Complainant”), represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA. Respondent is Steve Schwartz (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firemansfundblog.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2010; the National Arbitration Forum received payment on October 28, 2010.
On October 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <firemansfundblog.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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 postmaster@firemansfundblog.com. Also on November 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.
A timely Response was received and determined to be complete on November 29, 2010.
Complainant’s timely Additional Submission was received on December 1, 2010.
On December 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
The Respondent submitted an Additional Submission; however it was received after the deadline for submissions and thus found to be untimely. Since there is no evidence in the record or in the submission which might justify respondent’s tardy filing the Panel will not consider the submission.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
The Complainant's trademark is the name and mark FIREMAN'S FUND. The products and services with which Complainant's mark is used include insurance agencies; insurance claims processing; insurance information and consultancy; insurance underwriting in the field of property and casualty insurance; providing information in insurance matters; and providing underwriting, claims, and administrative services for property, casualty, accident, health, disability, and workers' compensation insurance, all for both private and institutional consumers.
Complainant's mark has been used in commerce since at least as early as 1896, and has been registered with the United States Patent and Trademark Office since at least as early as June 18, 1974.
Since at least as early as 1896, Complainant, its predecessors, and its related entities (collectively, "Complainant") have offered quality insurance and insurance-related products and services under the mark FIREMAN'S FUND. The FIREMAN'S FUND mark has been extensively advertised and Complainant has expended considerable effort and millions of dollars in offering quality products and services under the FIREMAN'S FUND mark. As a result of such efforts, and as a result of the long use by Complainant of the FIREMAN'S FUND mark, the FIREMAN'S FUND mark is recognized as a designation that identifies and distinguishes the quality insurance products and services offered by Complainant. Moreover, Complainant has developed substantial goodwill in the FIREMAN'S FUND mark for its insurance products and services.
In addition to Complainant's strong common law rights, and consistent with its long use
of the FIREMAN'S FUND mark, Complainant has obtained numerous U.S. Trademark Registrations and/or has filed the following applications for the mark FIREMAN'S FUND and other composite marks incorporating the mark FIREMAN'S FUND.
The domain name that is in dispute in this proceeding, <firemansfundblog.com>, is identical or confusingly similar to Complainant's mark. The at-issue domain name consists of Complainant's mark with the addition of only the generic word "blog," which describes an aspect or potential aspect of the basic goods and services offered under the FIREMAN'S FUND mark. As such, the disputed domain name is likely to cause confusion among consumers as to source, sponsorship, or affiliation.
Respondent has no rights or legitimate interests in the disputed domain name.
There is no question as to priority. Complainant's FIREMAN'S FUND Mark has been used since at least as early as 1896 and has been registered in the U.S. since at least as early as June 18, 1974. Upon information and belief, Respondent registered the disputed domain name no earlier than August 5, 2010. Upon information and belief, Respondent has not otherwise used the mark FIREMAN'S FUND and therefore has not established prior rights.
Upon information and belief, Respondent is not commonly known by the name "FIREMAN'S FUND." Upon information and belief, Respondent operates no other business or organization under the name "FIREMAN'S FUND."
The at-issue domain name directs a user to Respondent's portal website, which then directs users to the sites of third party competitors to Complainant. Where an identical or confusingly similar domain name resolves to a website that acts as a portal to other sites, some of which are controlled by Complaint's competitors, Respondent has not engaged in a bona fide offering of goods and services.
Respondent registered and is using the at-issue domain name in bad faith. Complainant's federal trademark registrations provided Respondent with constructive notice of Complainant's mark. Furthermore, Complainant's FIREMAN'S FUND mark is extensively advertised and well-known not only in its market area but also to the general public. Respondent's actual or constructive knowledge of Complainant's mark prior to registration of the at-issue domain name indicates bad faith.
Upon information and belief, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's Website, and to divert users from Complainant's websites to its own. Respondent is thus trading on the goodwill associated with Complainant's mark and creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent's website with Complainant's mark.
The use of a domain name for a portal site that leads consumers to similar products of competitors of Complainant constitutes registration in bad faith and "is precisely the type of use which the UDRP is designed to prevent."
On September 14, 2010, Complainant sent a cease and desist letter to Respondent both via email and Federal Express using the physical address and email address. The Federal Express letter was returned as undeliverable but there was no indication that the email failed to go through. To date, Respondent has failed to respond to Complainant's “cease and desist” letter.
B. Respondent
Respondent contends as follows:
In the summer of 2010 Respondent purchased the at-issue domain name, <firemandsfundblog.com>, with the intent to use it for free speech as a comment site. It was not purchased for commercial gain.
Respondent denies that the domain name is likely to cause confusion as to its source sponsorship or affiliation. It is quite easy to mark a website so that the affiliation is very clear and there is no mistake as to source, sponsorship or affiliation. Respondent fully intends to avoid any and all confusion among consumers by making it clear that the website is not affiliated with the trademark owner, making it clear that this is a non-commercial site and no products or services are offered, and making it clear that it is a site for commentary.
The addition of the work “blog” to the name “firemansfund” indicates the purpose of the site, which is commentary. In the age of the Internet, blogs are very common and they are well known to be opinions. They are the opinions of the bloggers. The very nature of this indicates that it will be independent commentary and not affiliated with complainant’s trademark.
To further show that an Internet blog in general is commercially independent look at the converse. If an Internet blog is written by the company, product or service that it is about, most consumers regard this as highly suspicious. Additionally, if a competitor creates an Internet blog, this is also regarded as suspicious. Therefore the name (in conjunction with the intended website markings) clearly distinguishes the fact that this site has no affiliation with the owner of the trademark, is not sponsored by the owner of the trademark, nor is affiliated with the owner of the trademark.
As stated, the respondent will make source, affiliation and sponsorship distinct. Therefore, there is no likelihood that this website will cause confusion among consumers.
Respondent purchased the domain name with the intent of a non-commercial use and without intent to mislead or divert consumers from the business of Complainant. Respondent has not intent to tarnish the trademark at issue. Respondent does have a right and legitimate interest in this domain name per ICANN Policy Rule 4(c)iii since the intended use is a fair use of Complainant’s mark.
Sites that comment on a trademark, such as <lowes-sucks.com> are allowed under the Anti-Cyber Squatting Consumer Protection Act based on fair use. The fact that a domain name contains a trademark is not a per se indicator of bad faith.
When respondent first check browsed to <firemansfundblog.com> there was a different result than what recently appeared. After reviewing the Complainant’s exhibits, Respondent contacted the domain name registrant and found that since there was a dispute in progress, nothing could be changed until the dispute was completed. Respondent has obtained instructions on how to change this and will do so immediately upon resolution of this matter.
Respondent has no control and receives no benefit from the activities of the Go-Daddy advertising name server. Go-Daddy is responsible for its content. Respondent was unable to change the advertising server when he tried to.
Complainant fails to prove actual competition or any customer’s landing on the domain name.
Respondent had no chance to cure any issues after receiving a letter from Complainant.
The first words on the site: “Welcome to firemansfundblog.com,” engender good will and is not anti-competitive.
C. Additional Submissions
Complainant additional contends as follows:
In his brief, Respondent engages in multiple instances of faulty legal reasoning and misconstrues numerous facts which run contrary to the Uniform Domain Name Dispute Resolution Policy ("Policy"). First, Respondent asserts that the addition of the generic term "blog" to Complainant's FIREMAN'S FUND name and mark would be understood to be unrelated third-party commentary that would not be likely to cause consumer confusion. However, apart from pure argument, Respondent failed to submit any evidence of any fair use of the term or any evidence to support his conclusion. On the other hand, Panels have routinely found that the addition of the generic term "blog" to a registered trademark was sufficient to establish confusing similarity.
Respondent admits that he lacks rights or legitimate interests in respect of the domain names at issue pursuant to Policy ¶ 4(a)(ii). Specifically, Respondent references a particular paragraph of the Complaint in his response but does not attempt to refute the allegations made in the Complaint. Accordingly, Respondent has also failed to demonstrate rights or legitimate interest pursuant to any of the bases set forth under
Policy ¶4(c).
Contrary to Respondent's claims, the facts that Respondent is not a direct competitor, is not seeking to mislead or divert consumers, does not intend to tarnish the trademark at issue and has subjective intentions to create a non-commercial commentary site do not protect Respondent from a finding of bad faith pursuant to Policy ¶ 4(a)(iii). Specifically, Complainant submitted unrebutted evidence that Respondent's website directed potential consumers to other websites that provided services that are directly related to the services that Complainant provides. Respondent's alleged intentions to the contrary and his lack of knowledge of the infringement is not a defense. Indeed, the evidence shows that Respondent's website was much more likely to create consumer confusion than if the domain name had been merely parked (as respondent claims to have believed) with no insurance-related content. However, even resolving a domain name to a free parking site is sufficient to constitute bad faith under Policy ¶ 4(b)(iv).
Respondent asserts that his intention was and is to create a non-commercial location for providing commentary and he lists several reasons why he has been unable to limit or otherwise control the content of the website until this proceeding was filed. Ultimately, however, it is the domain name owner who is responsible for controlling the content of a website and the domain name owner's failure to take the necessary actions to show legitimate good faith use do not refute paragraph 4(b) or satisfy paragraph 4(c) of the Policy.
Complainant has trademark rights in the mark FIREMAN’S FUND.
Respondent does not go by the name of FIREMAN’S FUND and is not authorized the name FIREMAN’S FUND.
The Respondent’s claimed intended use of the <firemansfundblog.com> domain name is a “fair use” of the Complainant’s mark.
The holding webpage being displayed at the at-issue domain name’s address is the result of the registrar’s business practices.
Respondent does not benefit from the registrar’s holding page.
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."
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.
Complainant asserts rights in the FIREMAN’S FUND mark through its registration of multiple trademarks with the United States Patent and Trademark Office (e.g., Reg. No. 986,653 issued June 18, 1974) and via common law rights in such mark. Respondent does not challenge Complainant’s rights in the mark.
The at-issue domain name eliminates the syntactically inappropriate apostrophe, removes the space separating FIREMAN’S from FUND, adding the word “blog” and the generic top-level domain (“gTLD”) “.com.” These alterations do not sufficiently differentiate the domain name from Complainant’s mark for the purposes of Policy 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also 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 domain names. see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, Respondent’s <firemansfundlog.com> domain name is confusingly similar to a mark in which Complainant has rights pursuant to Policy ¶4(a)(i).
The Panel’s analysis concerning Policy ¶4(a)(ii) is two‑tiered. First, Complainant must make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. The threshold for such showing is low. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Once Complainant establishes a prima facie case the burden effectively shifts to Respondent who must demonstrate that he nevertheless has rights and legitimate interests in the at-issue domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name and that Respondent does not operate a business or organization under such name. Complainant further contends that Respondent is not authorized to use the FIREMAN’S FUND mark or any variation thereof. Respondent does not refute Complainant’s claims. Complainant thus satisfies its slight initial burden.
Aside from the act of registering the <firemansfundblog.com> domain name, Respondent offers no evidence that he made preparations to use the domain name in connection with a bona fide offering of goods or services. In fact, Respondent denies having any commercial intent with regard to the domain name. Thus, Respondent cannot rely on the circumstances recited in Policy ¶4(c)(i) to counter Complainant’s prima facie case showing Respondent’s lack of rights and interest in the domain name.
WHOIS information for the at-issue domain name lists “Steve Schwartz” as the domain name’s registrant. These circumstances fail to demonstrate rights or interests pursuant to paragraph 4(c)(ii) of the Policy. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Finally, aside from the default holding page enabled by the registrar, the domain name is not used. Thus Respondent cannot show that he is making a legitimate non-commercial or fair use of the domain name, even though he may intend such use of the domain name in the future. As such, Policy 4(c)(iii) is inapplicable.
Therefore, because Complainant’s prima facie case is not effectively challenged and as otherwise set out above, the Panel finds that Respondent lacks rights and interest in respect of the domain name under Policy ¶4(a)(ii).
Complainant fails to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
To show “bad faith” registration and use, Complainant asserts that Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. See Policy ¶ 4(b)(iv). Complainant also argues that Respondent is trading on the goodwill of Complainant’s mark and profiting by redirecting Internet users, who are seeking Complainant’s company, to the businesses of Complainant’s competitors, as well as unrelated businesses.
Respondent’s claimed intended use of the at-issue domain name is for a blog concerning Fireman’s Fund. There is no direct evidence to the contrary. The at-issue domain name was recently registered and thus no adverse inference may be drawn since Respondent’s claimed intent in registering the domain name has not yet been implemented. Additionally, there is nothing in the record which suggests that Respondent trades domain names, registers the marks of others as domain names, or otherwise may be following a pattern of conduct which might impeach his claims regarding his intended use of the <firemansfundblog.com> domain. Complainant makes no assertion that if the disputed domain name were used in Respondent’s intended manner that such use would evidence bad faith under the Policy. Complainant points to the fact that the holding page referenced by the disputed domain name contains links to Complainant’s competitors as the basis of its bad faith claims. But as discussed below the mere fact of a holding page containing competitors links, without more, is insufficient to permit Complainant to carry its burden under Policy ¶ 4(a)(iii). The at-issue domain name’s registrar’s business practice is to set all new domain name registration records to initially resolve to a registrar (Go-Daddy) controlled holding page featuring advertising related to the domain name. The record remains this way until the registrant redirects the domain name’s DNS record elsewhere. The existence and content of such holding pages is thus not the result of the domain name registrant’s intent. Not surprisingly, the holding webpage at <firemansfundblog.com> is heavily branded by Go-Daddy. See www.firemansfundblog.com (December 12, 2010). Also not surprisingly advertising links placed on the at-issue holding page relate, at least to some extent, to the disputed domain name. It is thus Go-Daddy not the Respondent that receives any benefit from the complained of holding page. Respondent contends that he only learned of the holding page upon notification from the Complainant, and was blocked from changing it because of the instant UDRP. Complainant does not disagree. So while Respondent may be responsible for the referred webpage in that he set the wheels-in-motion for the holding page to be displayed, there is no evidence that Respondent intended the particular webpage and its content ever be linked to the at-issue domain name.
The Panel is well aware that prior panels have held respondents responsible for the use of their disputed domain names to reference third party initiated and controlled webpages. See, for example, SeaWorld LLC v. Dennis Combs, FA 1345530 (Nat. Arb. Forum Nov. 3, 2010 ) citing State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“…it is ultimately Respondent who is responsible for how its domain name is used.”); and Grisoft, s.r.o. v. Original Web Ventures Inc., D2006-1381 (WIPO Mar. 5, 2007) (“The Respondent is ultimately responsible for the content of the website generated by [a third party’s] technology.”). But to the extent that responsibility equates to bad faith in those cases, it does not here. The results of a UDRP proceeding should not hang on happenstance. Decisions should not vary simply because a particular registrar links new registrations to a holding page that happens to contain links that might offend Complainant, while another registrar puts up only a benign ‘under construction’ notice as a holding page or fails to resolve the domain name at all until the registrant specifies how so.
Any suggestion that by not changing the holding page immediately after registration Respondent thereby shows that he condones the content thereon necessarily presumes that the Respondent monitored the page, knew of the material that was being linked to his domain name and had the ability to change it, but instead allowed it to remain. In our case, Complainant does not show any of these presumptions to be valid. Furthermore, even if the holding page was of Respondent’s design, Complainant still must show more than just the fact of a portal page to successfully urge that Respondent acted in bad faith. See generally, McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (“Complainant must do more than just show pay-per-click use to establish bad faith... pay-per-click websites are not in and of themselves unlawful or illegitimate”).
As mentioned above, under certain circumstances panels have held respondents responsible for registrar’s holding pages. Therefrom such panels have concluded that the respondent acted in bad faith. But generally concluding from such cases that all third party enabled offensive holding pages are per se indicators of the applicability of Policy ¶4(b)(iv), contorts the common meaning of “bad faith.” “Bad faith” connotes that the relevant actor (here Respondent) has intentionally performed in a malevolent manner. Indeed, each of the enumerated circumstance under paragraph 4(b) of the Policy which “shall be evidence of … bad faith” contains language that necessitates a purposeful act by the respondent as a predicate to applying the section’s evidentiary circumstances to show bad faith. Similarly, the Anticybersquatting Consumer Protection Act enumerates certain factors without limitation that a court may consider to determine whether a domain name holder had bad faith intent in registering a domain name. See 15 USCS 1125(d)(1)(b)(i) The statute goes on to preclude finding bad faith intent where the registrant reasonably believed that the domain name was a fair use of the relevant mark. See 15 USCS 1125(d)(1)(b)(ii) There is no reason that the concept of domain name related “bad faith” under federal law and under the UDRP should not be consistent.
Therefore, although the fair use criteria under Policy ¶ 4(c)(iii) is inapplicable to demonstrate Respondent’s rights and interests in the domain name because the at-issue domain name is not being used, Respondent’s reasonable future fair use of the domain name for non-commercial commentary, absent any compelling evidence to the contrary, precludes a finding of bad faith registration and use.
While it is beyond the charge of any UDRP panel to order the Respondent to do so, the Panel expects that Respondent will immediately disconnect its <firemansfundblog.com> domain name from the registrar’s holding page as he promised in his signed pleading.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <firemansfundblog.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: December 15, 2010
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