American Farm Bureau Federation and New Mexico Farm & Livestock Bureau v. Daniel Turner
Claim Number: FA1610001698775
Complainant is American Farm Bureau Federation and New Mexico Farm & Livestock Bureau (“Complainant”), represented by Mary Pat Weyback of American Farm Bureau Federation, District of Columbia, USA. Respondent is Daniel Turner (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nmfarmbureau.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2016; the Forum received payment on October 19, 2016.
On October 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nmfarmbureau.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2016 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@nmfarmbureau.org. Also on October 20, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant has used the name and mark FARM BUREAU to facilitate its provision of services to, and to promote the interests of, farmers and ranchers across the United States since 1919.
Since 1946, Complainant American Farm Bureau Federation has granted to Complainant New Mexico Farm & Livestock Bureau an exclusive right to use the FARM BUREAU name and mark to provide parallel services to farmers and ranchers in the State of New Mexico.
Complainant holds a registration for the FARM BUREAU service mark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,612,451, registered September 4, 1990.
Respondent registered the domain name <nmfarmbureau.org> on or about September 25, 2006.
The domain name is confusingly similar to Complainant’s FARM BUREAU mark.
Complainant has not licensed or otherwise permitted Respondent to use its FARM BUREAU mark in any fashion.
Respondent has not been commonly known by the domain name.
Respondent employs the domain name to host a website that purports to compete with Complainant so that Respondent may receive revenue from the operation of associated pay-per-click hyperlinks.
Respondent’s use of the domain name is neither a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name is an attempt to gain commercially by creating a likelihood of confusion among Internet users as to the possibility of Complainant’s affiliation with or endorsement of its website.
Respondent very likely knew of Complainant and its rights in the FARM BUREAU service mark when it registered the domain name.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants, American Farm Bureau Federation and New Mexico Farm & Livestock Bureau. In support of their joint Complaint, it is alleged that Complainant has used the name and mark FARM BUREAU to facilitate its provision of services to, and to promote the interests of, farmers and ranchers across the United States since 1919, and that since 1946, Complainant American Farm Bureau Federation has granted to Complainant New Mexico Farm & Livestock Bureau an exclusive right to use the FARM BUREAU name and mark to provide parallel services to farmers and ranchers in the State of New Mexico.
The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” It is well established that this rule allows multiple parties to proceed as one if they can show a sufficient link to each other. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006):
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel there treating two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Further see Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), a panel there finding a sufficient link between two complainants where there was a license between them regarding use of a mark owned by one of them.
On the facts before us, and with no objection having been filed by Respondent, we conclude that a sufficient basis exists to permit the two named Complainants to proceed as one for all purposes in this proceeding. Accordingly, American Farm Bureau Federation and New Mexico Farm & Livestock Bureau will hereafter be identified throughout this Decision as a single Complainant.
Complainant has rights in the FARM BUREAU service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here United Kingdom). See Advance Auto Parts, Inc. v. Privacy Ltd., FA 1625582 (Forum July 23, 2015) (finding a UDRP Complainant’s registration of its mark with the USPTO sufficient to establish its rights in the mark under Policy ¶ 4(a)(i), notwithstanding that the respondent there resided in the Isle of Man).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <nmfarmbureau.org> domain name is confusingly similar to Complainant’s FARM BUREAU service mark. The domain name contains the mark in its entirety, less only the space between its terms, and with the addition of “nm,” a common abbreviation for New Mexico, plus the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. Specific to the point of elimination of the space between the terms of the mark of another and the addition to it of a gTLD in forming a domain name, see International Soap Box Derby, Inc. v. Domain Admin, FA 1602433 (Forum March 4, 2015).
And, as to the addition of a geographic identifier to another’s mark in creating a domain name, see Hess Corp. v. GR, FA 770909 (Forum September 19, 2006) (finding a respondent’s <hess-uk.com> domain name confusingly similar to a UDRP complainant’s HESS mark, because the addition of “uk” (an abbreviation for United Kingdom) and a hyphen failed to differentiate the domain name from that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding, under UDRP ¶ 4(a)(ii), that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent is not commonly known by the <nmfarmbureau.org> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its FARM BUREAU mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Daniel Turner,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that, because the relevant WHOIS record identified the registrant of a disputed domain name as “Dale Anderson,” that respondent was not commonly known by the <statefarmforum.com> domain name so as to be able to lay claim to rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <nmfarmbureau.org> domain name to divert Internet users searching for Complainant’s official site to Respondent’s own website, from the operation of which site Respondent receives pay-per-click revenue. This employment of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the contested domain name as spelled out in those provisions. See j2 Global Canada, Inc. v. VIJAY S KUMAR 1647718 (Forum January 4, 2016) (finding that a respondent who had registered and employed a disputed domain name which was used to offer for sale goods and services in the field of electronic marketing, and which thus competed with the business of a UDRP complainant, failed to show rights to or legitimate interests in that domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent registered and uses the <nmfarmbureau.org> domain name, which is confusingly similar to Complainant’s FARM BUREAU service mark, in order to profit by confusing Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name which was confusingly similar to the mark of a UDRP complainant, thereafter employing it to host a commercial website offering services similar to those offered by that complainant under its mark). To the same effect, see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the FARM BUREAU mark when it registered the contested <nmfarmbureau.org> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). See also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where a respondent was “well-aware” of the complainant’s YAHOO! mark at the time of its registration of a confusingly similar domain name).
Therefore, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <nmfarmbureau.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 22, 2016
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