American Family Mutual Insurance Company, S.I v. Mark Lukes
Claim Number: FA1712001761253
Complainant is American Family Mutual Insurance Company, S.I (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Mark Lukes (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amfamrealty.com>, registered with Network Solutions, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2017; the Forum received payment on December 8, 2017.
On Dec 05, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <amfamrealty.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 December 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2017 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@amfamrealty.com. Also on December 8, 2017, 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 January 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
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, American Family Mutual Insurance Company, S.I, is a leading provider of insurance services, including the sale, underwriting, administration and servicing of home, property, life, automobile, umbrella, commercial, travel, farm and ranch insurance. In connection with this business, Complainant markets its services under the AMERICAN FAMILY and related marks, including the AMFAM mark. Complainant has rights in the AMFAM mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,833,115, registered Sep. 6, 2006). Respondent’s <amfamrealty.com> domain name is confusingly similar to Complainant’s AMFAM mark, as the domain name incorporates the mark in its entirety, merely adding the related and descriptive term “realty” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <amfamrealty.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the AMFAM mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain resolves to a website upon which Respondent attempts to pass off as Complainant and offer competing services.
Respondent registered and is using the <amfamrealty.com> domain name in bad faith. Respondent’s attempts to pass off as Complainant in order to compete with complainants business is evidence of bad faith. Further, it is clear Respondent had actual or constructive knowledge of Complainant and its rights at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is American Family Mutual Insurance Company, S.I. of Madison, WI, USA. Complaint is the owner of domestic registrations for the marks AMERICAN FAMILY INSURANCE, AMERICAN FAMILY, AMFAM, and related marks constituting its collection of marks related to its insurance business. Specifically, Complainants have continuously used the AMFAM mark since at least as early as 2006 in connection with its underwriting of multiple lines of insurance, as well as with its business of insurance administration.
Respondent is Mark Lukes of Sarasota, FL, USA. Respondent’s registrar’s address is listed as Jacksonville, FL, USA. The Panel notes that Respondent registered the disputed domain name on or about September 9, 2016.
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(f), 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 (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.”).
Complainant claims rights in the AMFAM mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,833,115, registered Sep. 6, 2006). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the AMFAM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <amfamrealty.com> domain name is confusingly similar to the AMFAM mark, as the name incorporates the mark in its entirety, and merely adds the descriptive term “realty” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Complainant contends the term “realty” is descriptive of its business, as the AMFAM mark has been used to offer and sell insurance for real property and real estate for many years. The Panel here finds that the <amfamrealty.com> domain name is confusingly similar to the AMFAM mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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 (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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <amfamrealty.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AMFAM mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Mark Lukes.” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel here finds under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <amfamrealty.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <amfamrealty.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website where Respondent attempts to pass off as Complainant and offers services which are related to Complainant’s business. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Specifically, Complainant contends that the domain name resolves to a website upon which Respondent displays a logo which is very similar to Complainant’s and purports to offer real estate services. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel here finds that Respondent does not have rights or legitimate interests in the <amfamrealty.com> domain name.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent has registered and used the <amfamrealty.com> domain name in bad faith in an attempt to confuse Internet users and attract them to Respondent’s website in order to compete with Complainant’s business. Such activity can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005)(“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). The Panel again notes Complainant’s evidence that the domain name resolves to a website that Respondent uses to attempt to pass off as Complainant and offer competing services. The Panel finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends that due to its USPTO registration of the AMFAM mark, there is a legal presumption that Respondent could not have registered the <amfamrealty.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Based on the nature of the disputed domain, in comparison to Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and further finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <amfamrealty.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 16, 2018
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