American Farm Bureau Federation v. Darba Domain Holder / Domain Holder
Claim Number: FA1108001404216
Complainant is American Farm Bureau Federation (“Complainant”), represented by Richard A. Flynt of Roylance, Abrams, Berdo & Goodman, L.L.P., Washington D.C., USA. Respondent is Darba Domain Holder / Domain Holder (“Respondent”), represented by Steven Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <farmbureauquotes.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2011; the National Arbitration Forum received payment on August 22, 2011.
On August 22, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <farmbureauquotes.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2011 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@farmbureauquotes.com. Also on August 24, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 14, 2011.
A timely Additional Submission was received from Complainant on September 19, 2011. A timely Additional Submission was received from Respondent on September 26, 2011.
On September 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the domain name in dispute is confusingly similar to Complainant’s registered service marks for FARM BUREAU and FARM BUREAU INSURANCE, among other similar marks. Complainant also contends it holds common law rights in these marks.
Complainant states that Respondent is not commonly known by the domain name, and furthermore, that Complainant has not authorized Respondent to use the designations FARM BUREAU or FARM BUREAU INSURANCE.
According to Complainant, Respondent has acted in bad faith by offering services and products at the resolving website that compete with services and products offered by Complainant.
B. Respondent
Respondent states that the use of a term such as “quotes” in connection with a registered mark “obviates confusing similarity.” Respondent states that in this case the registered mark is used to describe a product or service rather than to identify the registrant of the mark.
Respondent states that the domain name is merely descriptive of the bona fide purpose of the resolving website which is to “sell Farm Bureau insurance policies and compare them to other products.” Respondent contends that under a fair use exception to trademark law, it has been held that domain names which incorporate the marks of others are permissible if they are being used to identify the products or services of the holder of the mark.
Respondent denies that he has engaged in bad faith.
C. Additional Submissions
Complainant points out in that a similar case involving Respondent, a panel transferred the domain name <farm-bureau-insurance-quotes.com> from the Respondent to the Complainant. Complainant denies that Respondent is making a bona fide offering of Complainant’s services. Complainant states the resolving website “never generates a legitimate FARM BUREAU insurance quote.” (emphasis in original). Complainant disagrees that the nominative fair use defense applies because, among other things, the resolving website does not supply insurance quotes from FARM BUREAU but from competitors. Complainant states that Respondent’s bad faith is evidenced by other UDRP proceedings in which Respondent’s domain names have been transferred to Complainant.
Respondent denies that he registered the domain name in bad faith stating that the domain name was registered in 2008 and it has been used since then without complaint. Respondent states he believed he was registering the domain name under the fair use exception.
Complainant, American Farm Bureau Federation, has used the FARM BUREAU and FARM BUREAU INSURANCE marks to deliver financial services, insurance underwriting, administration and agency services. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its FARM BUREAU mark(s) (e.g., Reg. No. 1,612,451 registered September 4, 1990).
Respondent, Darba Domain Holder / Domain Holder, registered the <farmbureauquotes.com> on April 18, 2008. Respondent’s disputed domain name resolves to a website that states, among other things, the following:
Our safe, secure Website gives you the tools to find the insurance coverage best suited for you and your family. You can get quotes fast for the types of life insurance, home and car insurance and health care coverage you need. By providing some basic information about yourself, where you live and the type of insurance you are looking for, you can have insurance providers competing to give you the best rates available.
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 that it has used its FARM BUREAU mark(s) in connection with financial services, such as insurance underwriting, reinsurance, and insurance brokerage, since 1919. Complainant provides evidence of its service mark registrations with the United States Patent and Trademark Office (“USPTO”) for its FARM BUREAU mark(s) (e.g., Reg. No. 1,612,451 registered September 4, 1990). Based on this evidence, the Panel finds that Complainant has established rights in its FARM BUREAU mark for the purposes of Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Metropolitan Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority).
Complainant argues that Respondent’s <farmbureauquotes.com> domain name is confusingly similar to its FARM BUREAU mark. Complainant asserts that the added term “quotes” is descriptive of Complainant’s financial services. The incorporation of a descriptive term which relates to Complainant’s business activities does not distinguish the domain name from Complainant’s mark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The disputed domain name also removes the space separating the terms of Complainant’s mark and contains the generic top-level domain (“gTLD”) “.com.” These changes are likewise insufficient to distinguish the domain name from Complainant’s marks. 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 name.”); see also Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel holds that Respondent’s <farmbureauquotes.com> domain name is confusingly similar to Complainant’s FARM BUREAU mark pursuant to Policy ¶ 4(a)(i).
In another matter involving the same Respondent, the panel found a remarkably similar domain name also to be confusingly similar to Complainant’s marks. In Am. Farm Bureau Fed’n v. Darba Domain Holder / Domain Holder, FA 1335833 (Nat. Arb. Forum Aug. 23, 2010), the panel found that the domain name <farm-bureau-insurance-quotes.com> was confusingly similar to Complainant’s FARM BUREAU and FARM BUREAU INSURANCE marks.
While Respondent contends that the <farmbureauquotes.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has a made a prima facie case and that the burden of showing rights and legitimate interests in the domain name has shifted to Respondent.
Complainant asserts that Respondent is not commonly known by the <farmbureauquotes.com> domain name. Complainant has shown that “Respondent is not a licensee of, agent of, associated with, or in any other way lawfully affiliated with Complainant or the insurance services offered by Complainant and its members” under Complainant’s FARM BUREAU mark. The WHOIS information lists “Darba Domain Holder / Domain Holder” as the registrant of the <farmbureauquotes.com> domain name, which is not similar to the domain name. Based on the evidence in the record, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent states that the <farmbureauquotes.com> domain name resolves to a website that asks Internet users for information in order to receive an insurance quote from one of Complainant’s agents. However, the record shows that, instead of connecting these Internet users with Complainant’s agents, Respondent proceeds to provide hyperlinks to Complainant’s competitors in the insurance business. Complainant claims, and Respondent does not deny, that it tested Respondent’s website and that Respondent’s website never provided any hyperlinks to Complainant’s insurance products and services. Therefore, the Panel finds that Respondent is not making 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Respondent relies heavily on the decision of the Ninth Circuit Court of Appeals which applied the doctrine of nominative fair use in Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). But that case is readily distinguishable. The defendant used the domain names <buy-a-lexus.com> and <buyorleaselexus.com> in connection with its business as an authorized Lexus dealer. The court observed that when customers purchased a car from the defendant “they receive a genuine Lexus car sold by an authorized Lexus dealer, and a portion of the proceeds ends up in Toyota’s bank account.” Id. Relying on the doctrine of nominative fair use, the Appellate Court directed that the district modify an injunction to allow “some use of the Lexus mark” in the defendant’s domain names. Id. No nominative fair use can be found in this case, because Respondent’s resolving website actually promotes sales of Complainant’s competitors, rather than promoting sales of Complainant’s products and services.
Complainant has demonstrated that Respondent uses the disputed domain name to resolve to a website that purports to offer the rates of Complainant’s insurance providers but instead provides hyperlinks to Complainant’s competitors in the insurance industry.[1] The Panel finds that registration of the <farmbureauquotes.com> domain name for such a use disrupts Complainant’s insurance business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”).
Furthermore, the Complainant claims that Respondent receives some commercial gain from the competing hyperlinks it hosts on the resolving website and that Respondent has attempted to create a false association with Complainant. The Panel determines that Respondent is attempting to profit by creating confusion as to Complainant’s affiliation with the disputed domain name and resolving website, and therefore finds that Respondent registered and uses the <farmbureauquotes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <farmbureauquotes.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 29, 2011
[1] The Panel finds that Respondent’s contention that the domain name describes a bona fide purpose—selling Farm Bureau insurance policies and comparing them to other products—is not supported by the record.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page