Florida Family Insurance Services, LLC v. Domain Admin / TotalDomain Privacy Ltd
Claim Number: FA2209002013322
Complainant is Florida Family Insurance Services, LLC (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, Illinois, USA. Respondent is Domain Admin / TotalDomain Privacy Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridafamilyinsurance.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on September 23, 2022; Forum received payment on September 23, 2022.
On September 26, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <floridafamilyinsurance.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2022 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@floridafamilyinsurance.com. Also on September 27, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, Florida Family Insurance Services, LLC is engaged in the offering of property insurance in the state of Florida. Complainant claims rights in the FLORIDA FAMILY INSURANCE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,997,659, registered July 19, 2011). The disputed domain name is identical or confusingly similar to Complainant’s FLORIDA FAMILY INSURANCE mark as it wholly incorporates the mark, and adds the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its FLORIDA FAMILY INSURANCE mark in the disputed domain name. This WHOIS information is evidence that Respondent is not commonly known as the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent uses the disputed domain name to host commercial hyperlinks to third-party websites that presumably generate commercial gain through receipt of click-through-fees.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. The disputed domain name is being used to host hyperlinks, some of which link to goods and services that are similar and/or competing with Complainant’s goods and services, presumably for the profit received from click-through fees. Respondent appears to be offering the disputed domain for sale at a price much higher than the typical out-of-pocket costs related to registering a domain name. Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the FLORIDA FAMILY INSURANCE mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on March 26, 2000.
2. Complainant has established rights in the FLORIDA FAMILY INSURANCE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,997,659, registered July 19, 2011).
3. The disputed domain name is resolved to a webpage that hosts commercial hyperlinks to third-party websites, some of which link to services that are similar or competing with Complainant’s services.
4. Respondent offers the disputed domain for sale at a price much higher than the typical out-of-pocket costs.
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 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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 claims rights in the in the FLORIDA FAMILY INSURANCE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,997,659, registered July 19, 2011). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of its registration with the USPTO, the Panel finds Complainant has rights in the FLORIDA FAMILY INSURANCE mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <floridafamilyinsurance.com> is identical or confusingly similar to Complainant’s FLORIDA FAMILY INSURANCE mark. The disputed domain name fully incorporates Complainant’s FLORIDA FAMILY INSURANCE mark and adds the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the FLORIDA FAMILY INSURANCE mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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 WHOIS information for the disputed domain name lists the registrant as “Domain Admin / TotalDomain Privacy Ltd.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s FLORIDA FAMILY INSURANCE mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that Respondent uses the disputed domain name to resolve to a webpage that hosts commercial hyperlinks to third-party websites, some of which link to goods and services that are similar and/or competing with Complainant’s goods and services. Complainant contends that the hyperlinks presumably generate commercial gain through receipt of click-through-fees. Complainant provides a screenshot of the disputed domain name’s resolving webpage. The Panel agrees and finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. The disputed domain name is being used to host hyperlinks, some of which link to goods and services that are similar and/or competing with Complainant’s goods and services, presumably for the profit received from click-through fees.
Hosting competing or unrelated hyperlinks for financial gains is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”); see also For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”); see additionally HEB Grocery Company, LP v. Nikolay Schastenko / SEO Ukraine, FA 1789019 (Forum July 3, 2018) (“Complainant provides screenshots of the domain name’s resolving website and claims, without contradiction that Respondent commercially benefits from an “Affiliate Program” in which users are redirected to job-oriented websites such as “Snagajob” and “Monster.” Therefore, Respondent’s use of the <hebcareers.net> domain name to attract users for commercial gain demonstrates bad faith per Policy ¶ 4(b)(iv).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving website hosting hyperlinks, some of which link to goods and services that are similar and/or competing with Complainant’s insurance services. Therefore, the Panel finds Respondent’s bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iii) and (iv).
In addition, Complainant contends that Respondent appears to be offering the disputed domain for sale at a price much higher than the typical out-of-pocket costs related to registering a domain name. The Panel notes that the landing page of the disputed domain name invites Internet visitors to “Buy this domain” for $11,299. Complainant contends that Respondent appears to be offering the domain for sale presumably in hope of soliciting an offer from Complainant to buy the disputed domain name. Complainant further contends that Respondent is also offering the disputed domain name for sale to the general public which also constitutes bad faith. See Staples, Inc. v. Yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); see also Radisson Hotels Int’l, Inc. v. Hong, FA1709001748994 (Forum Oct. 23, 2017) (agreeing that respondent’s offering to sell the disputed domain name alone is sufficient to find bad faith under the Policy); Target Brands, Inc. v. Hinn, FA1601001655563 (Forum Feb. 15, 2016) (“Such a generic offer to the public to sell by Respondent constitutes bad faith registration and use under Policy ¶ 4(b)(i).”). The Panel finds that Respondent’s offering the disputed domain name incorporating Complainant’s FLORIDA FAMILY INSURANCE mark in its entirety for sale for $11,299 to the general public constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <floridafamilyinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: October 24, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page