DECISION

Ohio Farmers Insurance Company v. webaddr.com

Claim Number:  FA0409000322831

PARTIES

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.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

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.

FINDINGS

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.   

DISCUSSION

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.

Identical and/or Confusingly Similar

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. 

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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. 

DECISION

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

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