American Family Mutual Insurance Company v. Robert Halpern / AmFam
Claim Number: FA1302001486194
Complainant is American Family Mutual Insurance Company (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Robert Halpern / AmFam (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amfamseminar.org>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2013; the National Arbitration Forum received payment on February 25, 2013.
On February 21, 2013, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <amfamseminar.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 February 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2013 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@amfamseminar.org. Also on February 27, 2013, 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 March 28, 2013, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amfamseminar.org> domain name is confusingly similar to Complainant’s AMFAM mark.
2. Respondent does not have any rights or legitimate interests in the
<amfamseminar.org> domain name.
3. Respondent registered and used the <amfamseminar.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells insurance services under its AMERICAN FAMILY, AMERICAN FAMILY INSURANCE, AMFAM, and MY AMFAM marks. Complainant holds trademark registrations for its marks with the U.S. Patent and Trademark Office (“USPTO”), including Registration Number 3,833,115 for AMFAM, issued August 10, 2010. Complainant has been using the domain name <amfam.com> since 1994.
Respondent registered the <amfamseminar.org> domain name on October 28, 2011, and uses it to redirect Internet users to a website displaying information about mortgage services.
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.
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.”).
The Panel finds that Complainant has rights in its AMFAM mark pursuant to Policy ¶ 4(a)(i), based on its registration with the USPTO. Panels routinely find that registration of a mark with a federal trademark authority is evidence of rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <amfamseminar.org> domain name is confusingly similar to Complainant’s AMFAM mark, as it simply adds the descriptive word “seminar,” and the gTLD “.org.” These changes are insufficient to distinguish the disputed domain name from Complainant’s mark. See Am. Online Inc. v. Neticq.com Ltd., WIPO Case No. D2000-1606 (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Trip Network Inc. v. Alviera, FA 914943 (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy paragraph 4(a)(i) analysis).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant contends that Respondent is not commonly known by the <amfamseminar.org> domain name. Although the WHOIS record lists “Robert Halpern / AmFam” as the registrant of the disputed domain names, Complainant states that it has not licensed, or permitted Respondent to use its AMFAM mark. There is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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).
Complainant states that the <amfamseminar.org> domain name is used to display information about mortgages, which Complainant argues is in the same financial services industry as Complainant, adding to consumer confusion. The Panel finds that the use of Complainant’s mark to redirect Internet users to Respondent’s commercial website is not a bona fide offering of goods or services and that advertisements are not legitimate noncommercial or fair uses of the disputed domain name. See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).); see also Microsoft Corporation v. Microsof.com aka Tarek Ahmed, D2000-0548 (WIPO July 21, 2000) (finding that “by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of goods and services, Respondent has not undertaken a bona fide or good faith offering of goods and services.”) Thus, the Panel finds that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is intentionally using a domain name confusingly similar to Complainant’s AMFAM mark in order to divert Internet users to its website, and no doubt receives revenue when misdirected Internet users click on the featured links. This is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that Respondent should have been aware of Complainant’s rights in the AMFAM mark, based on its USPTO registrations. Complainant points out that Respondent directs its website services to “Milwaukee, WI Homeowners,” indicating that Respondent had actual knowledge of Wisconsin-based Complainant and its AMFAM brand. The Panel agrees and finds that Respondent had at least constructive knowledge of Complainant’s rights in the AMFAM mark, a further indication of bad faith. See Orange Glo International, Inc. v. Jeff Blume, FA 118313 (Nat Arb. Forum Oct. 4, 2002) (finding that registering a domain name with constructive knowledge of a confusingly similar USPTO registration constitutes bad faith under Policy ¶ 4(a)(iii).).
The Panel finds that Complainant has satisfied 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 <amfamseminar.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated April 3, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page