American Farm Bureau Federation / Mississippi Farm Bureau Federation v. Domain Vault LLC / Domain Vault
Claim Number: FA1906001847560
Complainant is American Farm Bureau Federation / Mississippi Farm Bureau Federation (“Complainant”), represented by Mary Pat Weyback of American Farm Bureau Federation, Washington, DC, USA. Respondent is Domain Vault LLC / Domain Vault (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msfarmbureau.com>, registered with Name.com, Inc.
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 June 12, 2019; the Forum received payment on June 12, 2019.
On June 14, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <msfarmbureau.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 June 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@msfarmbureau.com. Also on June 25, 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 July 22, 2019, 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” 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.” Supplemental Rule 1(e) thus allows multiple parties to proceed as one where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympics v. Malik, FA 666119 (Forum May 12, 2006), the panel there noting that:
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 Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), where a panel found a sufficient link between two complainants where there was a license between them regarding use of the mark there in issue.
The Complaint filed with the Forum identifies two Complainant entities: American Farm Bureau Federation and Mississippi Farm Bureau Federation. The Complaint recites that Complainant Mississippi Farm Bureau Federation has an exclusive license from Complainant American Farm Bureau Federation granting service mark rights in the mark MS FARM BUREAU.
Given the Complainants’ assertions of the contractual link between them defining their respective rights in the MS FARM BUREAU mark, and inasmuch as Respondent does not object to their proceeding together, we determine that the two identified Complainants shall be deemed one Complainant for all purposes throughout this proceeding
A. Complainant
Complainant is an association organized and operated to promote, protect and represent the interests of farmers and ranchers.
Complainant has rights in the MS FARM BUREAU trademark under the common law dating from the 1920’s owing to its long and continuous development and promotion of that mark and its association with the provision of services and programs supportive of farmers and ranchers.
Respondent registered the domain name <msfarmbureau.com> on or about June 16, 2005.
The domain name is confusingly similar to Complainant’s MS FARM BUREAU trademark.
Respondent has not been commonly known by the domain name.
Respondent has not been licensed or otherwise authorized by Complainant to use Complainant’s MS FARM BUREAU mark.
Respondent’s use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent, for commercial gain, uses the domain name to redirect Internet users to various advertisements unrelated to the business of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s right in the MS FARM BUREAU mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark 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 by Respondent 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 as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, 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). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the MS FARM BUREAU trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its long and continuous use of the mark in commerce and its concomitant development and promotion of the mark in the marketplace, all as detailed in the Complaint. common law rights in the mark and does not currently hold a trademark registration. This is because, although the acquisition of rights in a mark by means of its registration with a national trademark authority is common, Policy¶ 4(a)(i) does not require a UDRP complainant to register its mark in order to meet the threshold test of standing to seek relief from cybersquatting under the Policy. See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017):
The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.
From a review of the record, we are satisfied that the proofs assembled in support of the Complaint are adequate to demonstrate that Complainant has acquired rights in its MS FARM BUREAU trademark meeting the requirements of the common law and dating from a time decades before Respondent’s registration of the <msfarmbureau.com> domain name. Accordingly, we turn to the central question posed by Policy ¶ 4(a)(i), i.e.: whether the domain name is identical to or confusingly similar to the mark. In so doing, we conclude that the domain name is substantively identical and confusingly similar to the mark. The domain name contains the mark in its entirety, with only the elimination of the spaces between its terms and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy. This is because domain name syntax does not permit the use of blank spaces, while every domain name requires a TLD. See, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017):
When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <msfarmbureau.com> 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 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) 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 (Forum September 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 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 December 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 they are 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) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <msfarmbureau.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the MS FARM BUREAU mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Vault, LLC/Domain Vault,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that the Complaint asserts, without objection from Respondent, that Respondent, for its commercial gain, uses the <msfarmbureau.com> domain name to redirect Internet users to various online advertisements unrelated to the business of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum October 10, 2016):
Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant…. The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <msfarmbureau.com> domain name, which we have found to be substantively identical and confusingly similar to Complainant’s MS FARM BUREAU trademark, is an attempt by Respondent to profit from the confusion thus caused among 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, for example, ESPN, Inc. v. Ballerini, FA 95410 (Forum September 15, 2000) (finding bad faith registration and use where a respondent linked a challenged domain name to another domain name, presumably receiving a portion of the advertising revenue from the resolving website by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the MS FARM BUREAU trademark when it registered the <msfarmbureau.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge through the name used for the domain and the use made of it.
The Panel thus 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 <msfarmbureau.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F Peppard, Panelist
Dated: July 26, 2019
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