Farmers Group, Inc. v. Sunshine
Claim Number: FA0910001288085
Complainant is Farmers Group, Inc. (“Complainant”), represented by Richard
J. Groos, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2009.
On October 7, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@farmershawaii.com, postmaster@farmersinsurancehawaii.com, postmaster@farmershawaii.net, and postmaster@farmersinsurancehawaii.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names are confusingly similar to Complainant’s FARMERS mark.
2. Respondent does not have any rights or legitimate interests in the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names.
3. Respondent registered and used the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Farmers Group,
Inc., has used its FARMERS mark in connection with insurance services since
1927. Since that time, Complainant has
continuously used the FARMERS mark and today has over fifteen million customers
nationwide. Complainant holds a
registration of the FARMERS mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,899,192 issued June 13, 1995).
Respondent, Sunshine Hawaii, registered the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names on April 20, 2009. All of the disputed domain names resolve to similar websites, each of which displays hyperlinks to third-party websites, some of which directly compete with Complainant’s insurance services business.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant holds a registration of the FARMERS mark with the USPTO (Reg. No. 1,899,192 issued June 13, 1995). Accordingly, the Panel finds that this registration is sufficient to establish rights in the FARMERS mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
All of the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names contain Complainant’s entire FARMERS mark, add the geographic term “Hawaii,” and add the generic top-level domain (“gTLD”) “.com” or “.net.” In addition, the <farmersinsurancehawaii.com> and <farmersinsurancehawaii.net> domain names add the descriptive term “insurance,” which describes Complainant’s insurance services business. The Panel finds that the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names are confusingly similar to Complainant’s FARMERS mark under Policy ¶ 4(a)(i) because none of these additions to Complainant’s mark sufficiently distinguish the disputed domain names from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden has now shifted to Respondent, from whom no response was received. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The WHOIS information for the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names lists “Sunshine Hawaii” as the registrant. Respondent has not offered any evidence to suggest that it is commonly known by any of the disputed domain names. Moreover, Complainant argues that it has not licensed or authorized Respondent to use the FARMERS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
All of the disputed domain names resolve to similar websites that feature hyperlinks to third-party websites, some of which are in direct competition with Complainant’s insurance services business. The Panel presumes that Respondent receives click-through fees for these hyperlinks. Accordingly, the Panel finds that Respondent’s use of the disputed domain names in this case is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names on April 20, 2009, Respondent has used the disputed domain names to display hyperlinks to competing third-party websites on the resolving websites. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business. The Panel further finds that such a disruption is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Moreover, the Panel finds that Respondent’s use of the
confusingly similar disputed domain names creates a likelihood of confusion as
to Complainant’s affiliation with the disputed domain names. Therefore, the Panel finds that Respondent is
commercially gaining from this likelihood of confusion through the presumed
receipt of click-through fees from the aforementioned hyperlinks, which is
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <farmershawaii.com>, <farmersinsurancehawaii.com>, <farmershawaii.net>, and <farmersinsurancehawaii.net> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 17, 2009
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