Ohio Farmers Insurance Company v.
webaddr.com
Claim
Number: FA0409000322831
Complainant is Ohio Farmers Insurance Company (“Complainant”),
represented by Timothy A. Lemper of Baker & Hostetler LLP,
1900 East 9th Street, Suite 3200, Cleveland, Ohio 44114. Respondent is webaddr.com (“Respondent”), P.O. Box 42660, Middletown, Ohio 45042.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <westfieldinsurance.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 2, 2004; the Forum received a hard copy of the
Complaint on September 2, 2004.
On
September 3, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the Forum that the domain name <westfieldinsurance.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com 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
September 9, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 29, 2004 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@westfieldinsurance.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 5, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin 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."
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 makes the following assertions:
1. Respondent’s <westfieldinsurance.com>
domain name is identical to Complainant’s WESTFIELD INSURANCE mark.
2. Respondent does not have any rights or legitimate
interests in the <westfieldinsurance.com> domain name.
3. Respondent registered and used the <westfieldinsurance.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Ohio Farmers Insurance Company, is in the in
the business of marketing property insurance, insurance underwriting services,
insurance agency services, insurance brokerage services, and fidelity and
surety services. Complainant is the
parent company of the Westfield Group, which is one of the nation’s 50 largest
property and casualty insurance groups.
Westfield Group has its headquarters in Ohio and has more than 2,300
employees working in 50 offices.
Complainant has been in business since 1848. Currently, Complainant is comprised of eight insurance companies,
including Westfield Insurance Company and Westfield National Insurance
Company. Westfield Insurance Company
has been incorporated in Ohio since 1929, and Westield National Insurance
Company has been incorporated in Ohio since 1968.
Complainant’s Westfield Insurance is one of Ohio’s largest non-public
companies, with more than 600,000 policy holders in 17 states. It also has a network of more than 2,000
independent agencies, $2.7 billion in consolidated assets, and $1.3 billion in
revenue. Furthermore, Westfield
Insurance is one of the ten largest writers of “agribusiness” insurance in the
United States and the largest contract performance bonds writer in Ohio.
Respondent registered the <westfieldinsurance.com> domain name on August 20, 1999. Respondent used the disputed domain name in
October 1999 to redirect Internet users to Respondent’s website, which offered
limousine reservation services at the <limoresv.com> domain name. However, the use of the domain name for this
purpose was brief and the only other use Respondent has made of the disputed
domain name is to divert Internet users to a web page featuring hyperlinks to
various insurance products and services.
This website also advertises the domain name registration for sale and
requests offers to the website’s owner.
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.
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 has
established in this proceeding that it has rights in the WESTFIELD INSURANCE
mark through establishing secondary meaning associating Complainant’s products
and services with its mark. Complainant
has been in business for approximately 146 years, has revenue of $1.3 billion,
and serves more than 600,000 policy holders in 17 states. Thus, the Panel finds that Complainant has
established common law rights in its mark through secondary meaning. See
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law.”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA
142318 (Nat. Arb. Forum Mar. 13, 2003) holding that Complainant established
rights in the descriptive RESTORATION GLASS mark through proof of secondary
meaning associated with the mark; see
also Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established.
The <westfieldinsurance.com>
domain name registered by Respondent is identical to Complainant’s WESTFIELD
INSURANCE mark because the domain name incorporates Complainant’s mark in its
entirety, adding only the generic top-level domain (gTLD) “.com.” The mere addition of a gTLD to Complainant’s
common law mark is irrelevant and, therefore, does not negate the identical
nature of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
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; see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY BY VICTORIA mark.
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <westfieldinsurance.com>
domain name, which contains Complainant’s WESTFIELD INSURANCE mark in its
entirety. Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent lacks rights and
legitimate interests in the disputed domain name. In fact, once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have such rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent
has no rights or legitimate interests with respect to the domain name it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”; see also
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist.
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Do the Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come
forward to [contest complainant’s allegations] is tantamount to admitting the
truth of complainant’s assertion in this regard.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of Complainant to be deemed true.
Respondent
briefly used the <westfieldinsurance.com> domain name in October
1999 to redirect Internet users to a website unrelated to Complainant, which
offered limousine reservation services at the <limoresv.com> domain
name. Respondent’s use of a domain name
that is identical to Complainant’s WESTFIELD INSURANCE mark to redirect
Internet users interested in Complainant’s products and services to a commercial
website sponsored by Respondent is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb.
Forum Nov. 29, 2002) finding that Respondent’s use of Complainant’s WELLS FARGO
mark to redirect Internet users to a domain name featuring magazine
subscriptions was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name; see also U.S. Franchise Sys., Inc. v. Howell, FA 152457
(Nat. Arb. Forum May 6, 2003) holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users to an unrelated business was not a
bona fide offering of goods or services; see also MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) finding no rights or legitimate
interests in the famous MSNBC mark where Respondent attempted to profit using
Complainant’s mark by redirecting Internet traffic to its own website.
Other than the
brief use of the <westfieldinsurance.com> domain name in
connection with limousine reservation services, Respondent has made no use of
the domain name except to direct it to a placeholder web page, which features
links to various products and services in competition with Complainant’s
business and offers the disputed domain name registration for sale. The Panel determines that Respondent’s use
of the disputed domain name to redirect Internet users interested in
Complainant’s WESTFIELD INSURANCE mark to a website that displays hyperlinks to
competing products, and services and offers the domain name registration for
sale, is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) finding that
Respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names; see
also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
finding no rights or legitimate interests where Respondent registered the
domain name with the intention of selling its rights; see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) finding Respondent’s conduct
purporting to sell the domain name suggests it has no legitimate use.
Furthermore,
there is no evidence to suggest that Respondent has been commonly known by the <westfieldinsurance.com>
domain name, and Respondent is not licensed by Complainant to use Complainant’s
WESTFIELD INSURANCE mark. Thus,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark; see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name.
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
As of the filing
of the Complaint, the <westfieldinsurance.com> domain name resolved
to a web page offering the domain name registration for sale. The web page otherwise displays only links
to various products and services related to the insurance field, which are in
competition with Complainant. The Panel
finds that Respondent’s use of the disputed domain name registration to resolve
to a website offering the domain name for sale is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) finding bad
faith where Respondent offered domain names for sale; see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”; see also General
Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) finding
that Respondent registered and used the domain name in bad faith by using the
domain name to direct users to a general site offering the domain name for
sale.
Furthermore,
Respondent intentionally registered the <westfieldinsurance.com>
domain name, containing Complainant’s WESTFIELD INSURANCE mark, for
Respondent’s commercial gain.
Respondent’s domain name diverts Internet users who seek Complainant’s
mark to Respondent’s commercial website through the use of a domain name that
is identical to Complainant’s mark.
Thus, the Panel finds that Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness; see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website; see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
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 <westfieldinsurance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: October 19, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page