Farmers Group, Inc. v. c/o FARMERSINSURANCEGROUP.COM
Claim Number: FA1111001413704
Complainant is Farmers Group, Inc. (“Complainant”), represented by Brandon Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is c/o FARMERSINSURANCEGROUP.COM (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <farmersinsurancegroup.com>, registered with Dotster.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2011; the National Arbitration Forum received payment on November 1, 2011.
On November 1, 2011, Dotster confirmed by e-mail to the National Arbitration Forum that the <farmersinsurancegroup.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@farmersinsurancegroup.com. Also on November 2, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <farmersinsurancegroup.com> domain name is identical to Complainant’s FARMERS INSURANCE GROUP mark.
2. Respondent does not have any rights or legitimate interests in the <farmersinsurancegroup.com> domain name.
3. Respondent registered and used the <farmersinsurancegroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Farmers Group, Inc., began using the FARMERS INSURANCE GROUP mark in 1927 in connection with its insurance services. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its FARMERS INSURANCE GROUP mark (Reg. No. 1,821,673 registered February 15, 1994).
Respondent, c/o FARMERSINSURANCEGROUP.COM, registered the <farmersinsurancegroup.com> domain name on December 20, 2003. The disputed domain name resolves to a website that contains hyperlinks that resolve to Complainant’s competitors. The competing hyperlinks are entitled “Auto Insurance Quotes,” “Term Life Insurance,” “Home Insurance Quotes,” Motorcycle Insurance,” etc.
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 the 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:
(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 FARMERS INSURANCE GROUP mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <farmersinsurancegroup.com> domain name is identical to Complainant’s FARMERS INSURANCE GROUP mark, as it merely adds the generic top-level domain (“gTLD”) “.com” and removes the spaces separating the terms of Complainant’s mark. Prior panels have found that the removal of spaces and the addition of a gTLD do not affect whether a domain name is identical to a complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). Consequently, the Panel finds that Respondent’s <farmersinsurancegroup.com> domain name is identical to Complainant’s FARMERS INSURANCE GROUP mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfies Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <farmersinsurancegroup.com> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not, and has never been, commonly known by the <farmersinsurancegroup.com> domain name. While the WHOIS information identifies the registrant of the disputed domain name as “c/o FARMERSINSURANCEGROUP.COM,” Complainant contends that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant and that Respondent is not authorized, permitted, or licensed to use Complainant’s FARMERS INSURANCE GROUP mark. Respondent has not responded to this case and has not presented any evidence that would support a finding that Respondent is commonly known by the domain name. Previous panels have found that, even though the WHOIS information may indicate that the respondent is commonly known by a disputed domain name, the respondent must present some additional evidence that it is commonly known as the domain name to establish rights under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Therefore, the Panel finds that Respondent is not commonly known by the <farmersinsurancegroup.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent uses the <farmersinsurancegroup.com> domain name to host hyperlinks that resolve to Complainant’s competitors in the insurance industry, and commercially gains from click-through fees. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel accordingly 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 of the <farmersinsurancegroup.com> domain name under Policy ¶ 4(c)(iii).
The Panel finds that Complainant satisfies Policy ¶ 4(a)(ii).
Respondent registered and uses the <farmersinsurancegroup.com> domain name for the purpose of diverting Complainant’s potential customers away from Complainant and to Complainant’s competitors. In cases in which the respondent uses the disputed domain name to host competing hyperlinks, prior panels have found bad faith registration and use. 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Thus, the Panel here finds that Respondent is guilty of Policy ¶ 4(b)(iii) bad faith registration and use.
Previous panels have found that a respondent’s use of a disputed domain name to host competing hyperlinks is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. 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). The Panel finds that Respondent registered and uses the identical <farmersinsurancegroup.com> domain name to commercially benefit by creating confusion among Internet users, which constitutes registration and use of the domain name constitutes Policy ¶ 4(b)(iv) bad faith.
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the FARMERS INSURANCE GROUP mark. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel agrees and further finds that Respondent registered the <farmersinsurancegroup.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant satisfies 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 <farmersinsurancegroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 13, 2011
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