Primerica, Inc. v. John DeMarco
Claim Number: FA2002001883059
Complainant is Primerica, Inc. (“Complainant”), represented by Carla Montgomery, Georgia, USA. Respondent is John DeMarco (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whyrvpsleavepfs.net>, registered with Launchpad.com Inc.
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.
Charles A. Kuechenmeister, Panelist
Complainant submitted a Complaint to the Forum electronically on February 12, 2020; the Forum received payment on February 12, 2020.
On February 13, 2020, Launchpad.com Inc. confirmed by e-mail to the Forum that the <whyrvpsleavepfs.net> domain name (the Domain Name) is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 10, 2020 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@whyrvpsleavepfs.net. Also on February 19, 2020, 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.
A timely Response was received and determined to be complete on March 10, 2020.
On March 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-known provider of life insurance, investments, and other financial products and services. It has common law rights in the PFS INVESTMENTS mark. Respondent’s <whyrvpsleavepfs.net> domain name is confusingly similar to Complainant’s mark as it combines an abbreviation of the mark with the generic added terms “why” and “leave” and the letters “rvps” and the “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not permitted or licensed Respondent to use its PFS Investments mark and Respondent is not commonly known by the Domain Name. Additionally, Respondent is not using the Domain Name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use because the resolving web site solicits financial services professionals affiliated with Complainant or considering such affiliation to become affiliated with Respondent.
Respondent registered and is using the Domain Name in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain and is disrupting Complainant’s competing business. Finally, Respondent had actual knowledge or constructive notice of Complainant’s PFS INVESTMENTS mark when he registered the Domain Name.
B. Respondent
Respondent agrees to remove the content from the web site resolving from the Domain Name, but the letters PFS are used in the business names of other third-party entities and for designation of a person as a “professional financial specialist.” Complainant does not have sufficient rights in the PFS letters under the PFS INVESTMENTS mark.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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.
Complainant has not registered its PFS INVESTMENTS mark with the United States Patent and Trademark Office or the governmental trademark authority of any other country, but it is well-settled that a complainant need not show registration of its mark to establish rights in a mark in order to meet the requirements of Policy ¶ 4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims it has established common law rights in the PFS INVESTMENTS mark. Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complaint Annex C is a printout from the Georgia Secretary of State web site showing an active registration for a corporation named PFS Investments, Inc., which was organized on July 7, 1981 under a different name and changed its name to PFS Investments, Inc. in 1992 (Complaint Annex B). Complainant Annex D is a copy of a printout from the Financial Industry Regulatory Agency (FINRA) which demonstrates that the company is and has been a registered broker-dealer since 1981, under its former name until 1992 and under the name PFS Investments since then. The Complaint states that PFS Investments, Inc. is a wholly-owned subsidiary of Complainant. Complainant offered no specific documentary evidence of this but the address of the principal business office and office of the registered agent for PFS Investments, Inc. is the same as that given for Complainant in the Complaint. Respondent does not dispute this allegation and the Panel takes it as true. The Complaint states that Complainant serves more than six million clients in all fifty states, plus Canada and Puerto Rico. Again, Complainant submitted no documentary evidence of this but Respondent does not dispute it, and evidence contained in Complaint Annex G, which is a printout of Respondent’s web site resolving from the Domain Name, further demonstrates that Complainant’s operations under the PFS INVESTMENTS mark are extensive and known to many clients throughout the U.S. On this evidence, the Panel finds that Complainant has demonstrated a secondary meaning in the PFS INVESTMENTS mark and that it has sufficient rights in the Domain Name to entitle it to bring this action. The fact that Complainant is technically a different corporate entity than PFS Investments, Inc. does not affect its right to bring this action, as it is the parent of PFS Investments, Inc. WIPO Overview 3.0, at ¶ 1.4.1 (“a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, . . , is considered to have rights in a trademark under the UDRP for the purposes of standing to file a complaint.”).
Respondent argues that the letters PFS are used as the name of other, third-party entities, and for a designation of certain financial advisors and, by implication, that Complainant is not entitled to the exclusive use of that mark. This argument may be germane in a trademark dispute conducted under federal law, but the Policy ¶ 4(a)(i) analysis is essentially a standing issue and is more limited in scope. Project Management Institute v. CMN.com, Case No. D2013-2035 (WIPO February 13, 2013) (“. . . the first element of the Policy serves essentially as a standing requirement.”).
Respondent’s <whyrvpsleavepfs.net> Domain Name is confusingly similar to Complainant’s PFS INVESTMENTS mark as it incorporates the dominant PFS element in its entirety, merely omitting the word “Investments” and adding the words “why” and “leave” and the letters rvps” (an acronym for “regional vice president,” which is an upper level sales force designation for independent contractors affiliated with Complainant), and the “.net” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”), Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
The Panel notes that while the great majority of contested domain names imply affiliation with or sponsorship by the complainant, this Domain Name does just the opposite, implying disparagement or criticism of the Complainant. Adding pejorative terms to a mark in a domain does nothing to eliminate or lessen confusing similarity. Boehringer Ingelheim Pharma GmbH v. Moniker Privacy, Case No. D2-15-1542 (WIPO October 21, 2015) (“It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such term does not negate the confusing similarity between the disputed domain name and the mark.”). WIPO overview 3.0 at ¶1.13 (“A domain name consisting of a trademark and a negative or pejorative term (such as <[trademark]sucks.com>, . . . ) is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element”). The “likelihood-of-confusion” issues are addressed elsewhere. Again, the focus of the Policy ¶ 4(a)(i) analysis is whether the complainant’s mark is recognizable within the domain name. If it is, the requirements of Policy ¶ 4(a)(i) are met, and the complainant has standing to bring the case.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the PFS INVESTMENTS mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not permitted or licensed Respondent to use its PFS INVESTMENTS mark, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use because the resolving web site solicits financial services professionals affiliated with Complainant or considering such affiliation to become affiliated with Respondent.
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information submitted to the Forum by the registrar lists the registrant of the Domain Name as “John DeMarco.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that evidence of a registrant name that does not correspond to the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complaint Annex F is a record of Respondent’s association with Complainant, showing an affiliation beginning in 2000 and terminating in 2015. Complaint Annex G is a screenshot of the web site resolving from the Domain Name. It consists of many pages of textual material comparing the business model and practices of Complainant with those of “legitimate independent firms” applicable to many aspects of the relationship between Complainant and its independent contractor sales agents and representatives. The comparisons are not favorable to Complainant, to say the least. The subjects covered include the promotion process, life insurance compensation, investment compensation, annuity compensation and others. The general tenor of the comparisons is to the effect that Complainant does not treat its agents and representatives fairly. Toward the end of the Annex the direction of the commentary changes from criticism of Complainant to invitation for the reader to join Respondent’s organization, which offers products and services similar to those offered by Complainant. These provisions state that Respondent’s organization offers the best products in the financial services industry, pays the highest compensation percentage, and provides the training necessary for agents to become competent and successful. Also included in the Annex G material is advice on how current agents and representatives of Complainant might effect a separation from Complainant while still retaining the clients they developed while with Complainant. Respondent invites contact at the email address getmeoutnow@protonmail.com.
It is clear that Respondent is using the Domain Name to compete with Complainant. Using a confusingly similar domain name to compete with a complainant does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). It is true that the web site focuses on competition for agents and representatives more than for actual insurance and investment clients, but Respondent is nevertheless using the Domain Name to compete with Complainant, and this does not confer rights or legitimate interests in the Domain Name upon him.
Respondent offered no evidence or argument relevant to the Policy ¶ 4(a)(ii) element of the case.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. Complainant argues that Respondent is using the Domain Name to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. The Panel is not convinced. Written out fully, the Domain Name reads, “Why regional vice presidents leave PFS.” This would not normally lead an Internet user to believe that the resolving web site would be affiliated with or sponsored by PFS. The Domain Name does not create a likelihood of confusion on that point. If anything, it conveys just the opposite impression. The facts of this case do not fit within the circumstances articulated by Policy ¶ 4(b)(iv), and Complainant’s argument in this regard is rejected.
The facts do, however, make a case for bad faith under the circumstances set forth in Policy ¶ 4(b)(iii). That paragraph reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, at least insofar as the web site is concerned, Respondent here is vying with Complainant for independent contractor agents and representatives, who are the means by which each entity earns its revenues. This is actual commercial competition between Complainant and Respondent. There is no question that Respondent’s activities as described above would tend to disrupt the business of Complainant. Further, it appears that achieving that outcome was in fact the primary reason Respondent registered the Domain Name. Among the statements located toward the end of the materials published by Respondent on his web site is the following: “Primamerica Lied [sic] to me and my family for about 15 years…and I am going to destroy them.” His advice to current agents and representatives of Complainant as to how they might leave Complainant and still keep clients they developed while with Complainant is further evidence of his intent in registering the Domain Name. The Panel concludes that Respondent’s conduct falls squarely within the circumstances stated in Policy ¶ 4(b)(iii) and is evidence of bad faith use and registration of the Domain Name.
Second, Complainant asserts that Respondent had constructive or actual knowledge of Complainant and its PFS INVESTMENTS mark when he registered the Domain Name. Arguments of bad faith based on constructive notice are not well-taken, as UDRP panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident from Respondent’s having been an agent or representative of Complainant for some 15 years and from his specific targeting of Complainant on his web site that Respondent had actual knowledge of Complainant and its mark when he registered the Domain Name in October 2017 (WHOIS report submitted as Complaint Annex A establishes the date of creation). Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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 submitted no evidence or argument relevant to the Policy ¶ 4(a)(iii) element of the case.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <whyrvpsleavepfs.net> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
March 18, 2020
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