Auto-Owners Insurance Company v. Webmarketing, Inc.
Claim Number: FA1201001423548
Complainant is Auto-Owners Insurance Company (“Complainant”), represented by Ron Brittain of Auto-Owners Insurance Company, Michigan, USA. Respondent is Webmarketing Inc (“Respondent”), represented by Paul Raynor Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autoowner.com>, registered with TierraNet Inc. d/b/a DomainDiscover.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:
Jeffrey M. Samuels, Charles K. McCotter, Jr., and Gervaise Davis III, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2012; the National Arbitration Forum received payment on January 13, 2012.
On January 10, 2012, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <autoowner.com> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 January 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2012 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@autoowner.com. Also on January 16, 2012, 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.
On February 6, 2012, the parties submitted a “Joint Request to Stay the Administrative Proceeding” for 45 days until March 21, 2012. The National Arbitration Forum issued an “Order to Stay the Administrative Proceeding” on February 6, 2012. On February 14, 2012, the parties filed a “Request to Remove the Stay of Administrative Proceeding.” An “Order to Lift Stay of Arbitration” was issued by the National Arbitration Forum on February 14, 2012.
A timely Response was received and determined to be complete on February 14, 2012.
A timely Additional Submission was received from Complainant on February 21, 2012.
A timely Additional Submission was received from Respondent on February 24, 2012.
A Second Additional Submission was received from Complainant on February 26, 2012.
A Second Additional Submission was received from Respondent on February 27, 2012.
On February 22, 2012, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, Charles K. McCotter, Jr., and Gervaise Davis III, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Auto-Owners Insurance Company contends that the domain name in issue, autoowner.com, is identical and/or confusingly similar because the domain name uses the “Auto-Owners” name almost identically in the URL (Auto-Owners Insurance Company vs. <autoowner.com>). Complainant notes that it owns the service mark AUTO-OWNERS, as used since 1916 in connection with life insurance underwriting services. The mark is the subject of U.S. Trademark Registration Nos. 2,045,276 and 1,972840. Complainant points out that the only difference between the mark and the domain name is that the latter does not include the hyphen between “auto” and “owners.”[1] Complainant also owns the domain name <auto-owners.com>.
Complainant argues that Respondent has no rights or legitimate interests in respect of the domain name. Complainant asserts that Respondent has no registered service mark for the use of Complainant’s company name, that Respondent is not in the business of selling insurance, and that the disputed website is merely a listing of quotes for other insurance companies and related search terms. According to Complainant, “[t]here is no bona fide offering of goods or services and the domain name has not been in service longer than the name ‘Auto-Owners Insurance Company’, which dates back to the early 1900s. Furthermore, there is no legitimate noncommercial or fair use of the domain name because the website is used only for advertising revenue purposes.”
Complainant maintains that Respondent has used the domain name to intentionally attract, for commercial gain, Internet users to the website <autoowner.com> by creating a likelihood of confusion with Auto-Owners Insurance Company’s registered service marks. “The website is used to attract and confuse consumers who are searching for Auto-Owners Insurance Company into visiting the infringing website and leading the consumers to click on the advertising links to competing insurance companies. There is no legitimate use of this website other than for advertising revenue. The website does not provide customer reviews, goods, services, quotes, specialized information, or any other legitimate service to consumers. It is a pay-per-click [PPC] website used to generate advertising revenue for Respondent. The use of a domain name to mislead users to access these types of websites in order to increase traffic has been held to be a form of bad faith use. ”
Complainant notes that the disputed site makes no reference to Complainant, only to Complainant’s competitors. “An everyday user of the Internet would not intentionally attempt to visit this site. The visitation occurs only by accident after the user discovers the URL is substantially similar to Auto-Owners Insurance Company. Auto-Owners Insurance is not a generic set of terms under which the Respondent may argue a legitimate holding of the domain name.”
B. Respondent
Respondent, in its Response, does not contest that the disputed domain name and the registered mark AUTO-OWNERS are identical or confusingly similar, as measured under the UDRP. It contends, however, that Complainant has not established a prima facie case.
Respondent contends that the phrase ”auto owner” is the subject of widespread public use. Respondent submits evidence that a simple Google® search of the term “auto owners” minus Complainant’s mark shows 135 million hits (see Response, Annex 5), that an identical Google® search covering the past 12 months shows 835 million descriptive results (see Annex 6), and that there are over 1,350 domain names that contains the phrase “auto owners” (see Annex 8).
According to Respondent, the disputed domain name, <autoowner.com>, is a logical combination of generic/descriptive terms which are being used in an apt manner consistent with their generic/descriptive sense. Respondent asserts that it does not use the phrase “auto owners” as a trademark. Respondent maintains that “[a] trademark registration does not grant Complainant a world-wide right to exclude descriptive use by others. Nor does it render Respondent’s use without rights or lacking legitimacy. And, although Respondent may not be in the in the ‘insurance business’, it is in the business of registering generic and descriptive domain names for advertising or other content relevant to the subject matter of the domain. Such is entirely legitimate.”
Respondent indicates that the historical and current images of the website establish its rights and legitimate interests because the links found at such site are reasonably related to the subject matter of the domain name.
Respondent asserts that it is not using the domain name to divert consumers. “This is not a case in which the Respondent is using ‘auto owner’ to sell spoons (or any other unrelated product). A simple review of the Google® search evidence clarifies that insurance companies, including Complainant, advertise and otherwise promote their sites by linking to ‘Auto Owner’ as a key word phrase.”
“The Domain Name is used as a ‘permanent’ keyword for all matters of interest of vehicle owners. The PPC results are consistent with the logical meaning of the Domain Name. Such constitutes ‘fair use’ under Policy 4 (c) (iii), even when it is commercial in nature. … Nothing on the PPC page suggests that it is related to the Complainant. There is no logo or indication that the PPC page is an ‘official’ site. The Domain Name resolves to a garden variety PPC page and even the most casual and inattentive user would immediately understand that they are not viewing Complainant’s website.”
Respondent further contends that Complainant’s assertions of confusion “are based entirely on bald assertions without evidence. They are ‘guesses’ and made more problematic based upon a somewhat less than honest attempt to compare Respondent’s actions to phrases in which it holds no trademark rights. Complainant complains that the resulting PPC webpage includes references to Complainant’s competitors…. However, this is not the fault of Respondent and does not impact the legitimacy of Respondent’s conduct. Respondent does not target Complainant or its competitors. Insurance-related links are present because the very words of the Domain Name are relevant to auto insurance.”
With respect to the issue of bad faith registration and use, Respondent notes that Complainant has provided neither argument nor evidence pertaining to bad faith registration. The only evidence on the issue of bad faith registration, Respondent notes, shows that the domain name was registered in 1998 and reflects a PPC page for matters logically of interest to vehicle owners. In paragraph 7 of his “Declaration In Support of Response” (see Annex 2), Chris Deluge avers that “I have spoken to each of the [Respondent’s] employees concerning this UDRP and the Domain Name and have been informed that none of them were aware of Complainant or its asserted trademarks prior to the registration of the Domain Name. I was personally surprised to learn that the term was subject to trademark registration.”
According to Respondent, “[t]he Domain Name was not registered and is not used to create confusion…. The Domain Name is used in a neutral manner – which neither disparages nor favors the Complainant or its competitors.”
Respondent notes that Complainant waited almost 15 years[2] to bring this UDRP. According to Respondent, the failure to act for such a long period of time infers that Complainant never considered its claims to be strong. Respondent further points out that Complainant brought an earlier proceeding against Respondent involving the disputed domain name, which it later abandoned. Such action “placed Respondent in a detrimental position thinking that its continued use of the Domain Name was legitimate and in good faith.”
C. Additional Submissions
Complainant argues that while “auto owners” might be considered descriptive in some fields, the phrase “auto owners” has acquired secondary meaning and has become distinctive of Complainant in the field of insurance. Complainant indicates that it is licensed to do business in 31 states and conducts business in 26 states, has over 37,000 agents and over 6,200 agencies, has over 4 million policies in force, has written premiums exceeding $4 billion, and has been using the AUTO-OWNERS and AUTO-OWNERS INSURANCE marks continuously for over 90 years. (See Exhibit A, consisting of Affidavit of Katie Noirot, senior vice president, marketing and sales.)
Complainant then contends that Respondent has no rights or legitimate interests in the disputed domain name inasmuch as the domain name “resolves to a website which is merely a pay-per-click website making infringing use of Complainant’s trademark with multiple references to insurance on its website.”
Exhibit E to Complainant’s Additional Submission consists of screenshots of the <autoowner.com> site. According to Complainant, these pages clearly show that Respondent is not using the domain name as a descriptive or generic phrase or as a permanent keyword for advertising purposes and that, contrary to Respondent’s assertion, the site suggests that it is related to Complainant. Respondent notes that the title of the site is “Welcome to autoowner.com,” the mark is in the header on each page, the phrase “Car Insurance” is front and center in the header at the top of the page, and that, under the heading “Related Searches,” the first topic is “Auto Owner,” which is clearly Complainant’s mark, and the last topic is “Auto Insurance Quotes.”
Complainant also maintains that the facts show that Respondent registered and is using the domain name in bad faith. Complainant observes that Respondent is located a mere 100 miles from Complainant’s national headquarters in Lansing, Michigan. “Put simply, given the proximity of Respondent to Complainant, together with a review of Respondent’s most recent and accessible web pages views in which Respondent made multiple references to Complainant’s trademark and the term insurance – the specific field in which Complainant operates – it is disingenuous for Respondent to assert, as it has, that it was unaware of Complainant and its trademark and that it is using the domain name in a fair manner.”
Complainant complains that Respondent is violating paragraph 4(b)(iv) of the Policy by intentionally attempting to attract, for commercial gain, internet users to its site by creating likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site and/or of a product or service on such site. Complainant contends that Mr. Deluge’s Declaration does not include a direct denial of knowledge of Complainant or of its trademarks. It is “inconceivable,” Complainant asserts, that Respondent was not aware of Complainant and of its marks when it registered the disputed domain name.
Complainant also maintains that Respondent’s actions represent a disruption of Complainant’s business and indicate bad faith registration and use under paragraph 4(b) (iii) of the Policy.
Finally, Complainant contends that laches is a not a defense available to Respondent.
Respondent, in its Additional Submission, first contends that Complainant’s Additional Submission should be rejected. Respondent asserts that an additional submission is proper only upon request of the panel based on a showing of exceptional circumstances. In Respondent’s view, Complainant’s Additional Submission amounts to a do-over and, in reality, constitutes a rebuttal to the Response. The “additional evidence,” Respondent contends, contains nothing that could not easily have been submitted with the original Complaint.
Focusing on the issues raised in Complainant’s Additional Submission, Respondent maintains that Complainant failed to establish common law rights in its marks, insofar as there is no evidence of the necessary continued use or that the phrases “Auto-Owners” and “Auto Owners Insurance” are used as a mark.
Respondent further asserts that the fact that the domain name appears on the webpage is not infringing because such use does not constitute trademark use; it is the description of the address. The fact that the site includes insurance-related links does not support Complainant’s case, Respondent argues, since insurance is legitimately related to vehicle owners.
Respondent emphasizes that the Complaint did not even raise the issue of bad faith registration in its Complaint and the fact that Respondent is located 100 miles from Complainant is not persuasive on the issue. Respondent reports that an internet search shows that there are over 17,164 companies located in Lansing, Michigan and that a 100-miles radius from Lansing includes Detroit, Flint, Grand Rapids, and Toledo. “The obvious conclusion is that, like most people, Respondent is not aware of every company within 100 miles and given the descriptive nature of the Domain Name, Respondent was not aware of Complainant or its asserted trademark.”
The fact that two general insurance-related links appear at Respondent’s site is not surprising, Respondent asserts, given the logical connection between car ownership and insurance. The insurance links, which comprise a minority of the links, are generic in nature. The evidence, Respondent declares, does not show that Respondent went out of its way to target insurance.
With respect to the 15-year delay in filing this UDRP, Respondent concedes that laches is not a defense but points to a number of UDRP panel decisions[4] holding that a long period of delay increases the burden of a complainant.
In its Second Additional Submission, Complainant simply contends that its initial Additional Submission was appropriate under NAF Supplemental Rule 7, based on the consensus view of UDRP panels.
In its Second Additional Submission, Respondent reiterates its view that supplemental filings are appropriate only in exceptional circumstances and that such circumstances do not exist in this case. Respondent further contends that NAF Supplemental Rule 7prohibits supplemental filings that act to amend the Complainant and that, in this case, Complainant’s initial Additional Submission amends the Complaint in at least two substantive points – by relying on common law trademark rights and by adding allegations of bad faith registration.[5]
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.
As noted above, the Panel finds no need to address this element of the Policy.
As noted above, the Panel finds no need to address this element of the Policy.
Registration and Use in Bad Faith
The Panel finds that the evidence does not establish that the disputed domain name was registered and is being used in bad faith. The UDRP requires proof of both bad faith registration and use in order to satisfy this element of the Policy. In an effort to establish bad faith registration, Complainant essentially argues that Respondent “should have known” of Complainant’s existence and the existence of its AUTO-OWNERS mark. However, even if that is the case, there is no evidence that Respondent, in registering its domain name, targeted Complainant or its mark or used such domain name in a deliberate attempt to create a likelihood of confusion with Complainant’s mark.
Rather, the evidence supports Respondent’s assertion that it registered and is using the term “autoowner” in its domain name merely to describe the contents of its site – to indicate to internet users that the site includes useful information for an “auto owner.” And, of course, as noted by Respondent, information regarding insurance and insurance quotes, Complainant’s product line, is useful information to an auto owner.
DECISION
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 <autoowner.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Charles K. McCotter, Jr.,
and Gervaise Davis III, Panelists
Dated: March 5, 2012
[1] This, obviously, is not correct inasmuch as the disputed domain name uses the term “owner” as opposed to “owners.”
[2] The Panel notes that the UDRP was not approved until October 1999, which is less than 15 years ago.
[3] In paragraph 12 of his Declaration, Mr. Deluge asserts that “[a]ny indication that [Respondent] may have been willing to transfer the Domain Name to Complainant was ill-advised due to my lack of understanding, the absence of legal counsel and has been withdrawn.”
[4] See, e.g., Mile, Inc. v. Michael Burg, D2002-0616; Charter Comm. Inc. v. CK Ventures Inc., D2010-0228.
[5] Exercising its discretion under Rule 10, the Panel has considered the argument and evidence advanced in all the parties’ submissions for whatever value they may have in reaching our decision.
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