Farmers Group, Inc. v. Sevag Toujian / Mind 2 Print
Claim Number: FA1901001827408
Complainant is Farmers Group, Inc. (“Complainant”), represented by Edwin Burgos of Farmers Group, Inc., California, USA. Respondent is Sevag Toujian / Mind 2 Print (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <farmersbusinesscards.com>, <farmersinsuranceprinting.com>, and <farmer-printing.com> (‘the Domain Names’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2019; the Forum received payment on January 29, 2019.
On January 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <farmersbusinesscards.com>, <farmersinsuranceprinting.com>, and <farmer-printing.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 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@farmersbusinesscards.com, postmaster@farmersinsuranceprinting.com, postmaster@farmer-printing.com. Also on February 4, 2019, 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 February 28, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the trademark FARMERS, registered, inter alia, in the USA for insurance related services with first use recorded as 1927. It has owned farmers.com and farmersinsurance.com since 1996.
The Domain Names are confusingly similar to the Complainant’s FARMERS mark adding only the generic terms ‘business cards’, ‘insurance’ and/or ‘printing’ and the gTLD .com which do not distinguish the Domain Names from the Complainant’s mark.
The Respondent does not have rights or legitimate interests in the Domain Names, is not commonly known by the Domain Names and has not been authorized by the Complainant to use the Complainant’s mark.
The Respondent uses the Domain Names to offer products featuring the Complainant’s name and official logo without permission. This is not bona fide use or a legitimate noncommercial fair use.
This is bad faith registration and use causing confusion for commercial gain. The use of the Complainant’s logo on the Respondent’s web site shows that the Respondent is aware of the Complainant and its rights. The Respondent has previously agreed to take down the sites but never did.
B. Respondent
The Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trademark FARMERS, registered, inter alia, in the USA for insurance related services with first use recorded as 1927. It has owned farmers.com and farmersinsurance.com since 1996.
The Domain Names, registered about ninety years after the Complainant’s trade marks were first used, have been pointed to a site offering products using the Complainant’s name and official logo without permission.
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 the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the 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.”).
Identical and/or Confusingly Similar
The Domain Names consists of the Complainant’s FARMERS mark (registered, inter alia in the USA for insurance related services and first used 1927), the generic terms ‘business cards’, ‘printing’ and/or ‘insurance’ and/or a hyphen and the gTLD.com.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant). The Panel agrees that the addition of the generic elements ‘business cards’ ‘insurance’ and/or ‘printing’ to the Complainant's marks does not distinguish the Domain Names from the Complainant's registered trade mark pursuant to the Policy. Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i)).
The gTLD .com does not serve to distinguish the Domain Names from the Complainant’s marks. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of Policy ¶ 4(a)(i) to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site attached to the Domain Names uses the Complainant's word mark and official logo on products without permission. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such, it cannot amount to the bona fide offering of goods and services and, since it is commercial, cannot be noncommercial fair use. Use of a domain name to offer unauthorized products bearing a complainant’s mark in a way to suggest the goods are official is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark without authorization).
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist, the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant. The use of the Complainant's word marks and logo marks on the Respondent's web site shows that the Respondent is aware of the Complainant. Having agreed to remove the websites in correspondence with representatives for the Complainant, the Respondent has not done so. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of the Complainant. MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <farmersbusinesscards.com>, <farmersinsuranceprinting.com>, and <farmer-printing.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 4, 2019
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