The Complainant is American Family Mutual Insurance Company of Madison, Wisconsin, United States of America ("USA" or "US"), represented by Steven M. Levy, USA.
The Respondent is Joe Caulfield of St. Peters, Missouri, USA, represented by Brian R. Gibbons, USA.
The disputed domain names <americanfamilyclaims.com>, <americanfamilyclaims.exposed>, <amfamclaims.com>, <amfamclaims.exposed>, <amfaminsurance.exposed>, <amfampropertyclaims.com>, and <amfampropertyclaims.exposed> (the "Domain Names") are registered with Marcaria.com International, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. The Response was filed with the Center on June 16, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 25, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant filed a supplemental filing to the Response on June 20, 2018.
The Complainant is an insurance and financial services company headquartered in Madison, Wisconsin, USA. It is a Fortune 500 company with 2017 revenues exceeding USD 9.3 billion, some 16,000 employees, and an extensive network of independent agents. According to the Complainant's website at "www.amfam.com", the Complainant operates in 19 of the US states, including Missouri where the Respondent is located. The record includes examples of the Complainant's advertising in broadcast and print media as well as online, and of its brand recognition in media stories and awards for the charitable and educational activities of the associated American Family Dreams Foundation.
The Complainant holds a number of US-registered trademarks, including the following:
|
MARK |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
AMERICAN FAMILY (Standard characters) |
0773381 |
July 14, 1964 |
|
AMERICAN FAMILY INSURANCE (Words and Design) |
0773380 |
July 14, 1964 |
|
AMFAM (Standard characters) |
3833115 |
August 10, 2010 |
|
MY AMFAM (Standard characters) |
3833116 |
August 10, 2010 |
The Respondent is a licensed public insurance claims adjuster in Missouri, USA. As such, the Respondent is engaged as an advocate for persons making claims against insurance companies. The Respondent has served as an expert witness and mediator in disputes involving property insurance claims. He has served as the president of the Missouri Public Insurance Adjuster Association and as the president of the Consumers' Insurance Information Bureau, and he has received a commendation from the Attorney General of the state of Missouri. The Respondent has appeared on television and radio programs and campaigned for election to the US Congress "based on a platform dealing with the excesses of the insurance industry."
According to the Response and the Respondent's affidavit, the Respondent's residence, which was insured by the Complainant, was damaged in a hailstorm in 2011. The Respondent's insurance claims are the subject of an ongoing dispute with the Complainant. The Respondent delivered a summary of his concerns and injuries to the Complainant in May 2014 and then registered the seven Domain Names on June 8, 2014 for use in connection with a potential criticism website that has never been published. The Respondent filed a lawsuit against the Complainant in 2015, which is evidently still pending.
The Domain Names each resolve to a default landing page published by the Registrar, indicating only that "This domain has been registered through Marcaria.com" and displaying links that advertise the Registrar's own services relating to domain registration, trademark registration, and new generic Top-Level Domains ("gTLDs").
The Complainant asserts that the Domain Names are identical or confusingly similar to its registered trademarks, and that the Respondent has no rights or legitimate interests to use the Domain Names without permission. The Complainant argues that there is no evidence for a legitimate criticism use of even the ".exposed" Domain Names, as nothing has been done with the Domain Names since they were registered four years ago.
The Complainant contends that the Domain Names are misleading and have been parked for commercial gain. As the Respondent has not developed websites himself, the Complainant urges the Panel to apply the "passive holding" doctrine to find bad faith, as well as noting the potential for initial confusion and a pattern of bad faith registration in filing seven domain names based on confusingly similar strings.
The Respondent does not challenge the Complainant's trademarks but claims additional words in the Domain Name strings avoid confusion and support his claims to an intent to use the Domain Names in good faith for legitimate purposes. The Respondent says he registered the Domain Names to use them "exclusively for the noncommercial purposes of criticism of and commentary on American Family and their practices." He chose the four ".exposed" Domain Names to emphasize this intent and because the registrar advertised that they were meant for the purpose of criticism and commentary. The Respondent denies any intent to mislead Internet users or publish advertising on sites associated with the Domain Names. The Respondent has not yet posted content because of the pending litigation with the Complainant. As recounted in the Respondent's affidavit:
"My intent was, and still is, to place non-commercial criticism and commentary of American Family on these sites, including statements and commentary concerning my personal dispute with American Family, as well as statements by third parties concerning their own disputes with American Family. On the advice of my attorney, I have refrained from any public postings on these domain names until my dispute with American Family is concluded, and my plans for using these sites have been put on temporary hold. Similarly, the third parties whom I would wish to add commentary concerning do not wish any public statements to be
made until their case is concluded."
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The Complainant submitted an "Additional Statement" replying to the Response. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding "with due expedition". Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.6.
The Complainant's Supplemental Filing does not refer to material new evidence or arguments that could not reasonably have been anticipated. It largely reargues the Complaint and rebuts the Response. A principal motivation for filing seems to be to advance another reason why the ".exposed" Domain Names are confusingly similar to the Complainant's trademarks and not obviously critical: insurance policies have to do with risk "exposure". The Panel does not consider that this meets the standard for a supplemental filing and declines to accept the Complainant's Additional Statement.
As in most cases, the gTLD ".com" is not a distinguishing feature in three of the Domain Names. See WIPO Overview 3.0, section 1.11. However, the other four Domain Names are in the gTLD ".exposed". The Respondent suggests that this automatically negates a finding of confusing similarity. The Complaint argues, on the other hand, that this word does not necessarily imply criticism and observes that UDRP panels have declined to reject complaints under the first element even when the second-level domain names were in the form of "[trademark]sucks". See id., section 1.3. The Panel agrees with the consensus view in WIPO decisions that the first UDRP element should be viewed as a straight forward standing requirement, so the merits can be considered more fully in the context of the second and third elements of the Complaint.
The Domain Names all include either the Complainant's AMERICAN FAMILY or AMFAM marks in their entirety and add dictionary words ("claims", "property claims", or "insurance") that are generic and (see WIPO Overview 3.0, section 1.8), are relevant to the Complainant's business.
The first element of a UDRP complaint "functions primarily as a standing requirement" and entails "a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name". See WIPO Overview 3.0, section 1.3. The Panel concludes under this test that the Domain Names are all confusingly similar to the Complainant's marks for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Respondent in this case relies on paragraph 4(c)(iii), asserting an intent to use the Domain Names "to place noncommercial criticism and commentary of American Family on these sites, including statements and commentary concerning my personal dispute with American Family, as well as statements by third parties concerning their own disputes with American Family." This is a plausible motivation, given the following undisputed facts:
- The Respondent is a licensed, independent insurance claims adjustor with a long history of publicly criticizing the insurance industry in the media, in professional and consumer associations, and in an election campaign.
- The Respondent has a disputed property insurance claim and a pending lawsuit against the Complainant.
- There is no evidence that the Respondent has used the Domain Names commercially to advertise his own professional services or derive income from third-party advertising.
The Complainant correctly observes, however, that the Respondent has never actually used the Domain Names for criticism or commentary. The Policy, paragraph 4(c)(iii), refers to "making a legitimate noncommercial or fair use" and does not add a provision covering "demonstrable preparations to use", as does paragraph 4(c)(i) with regard to use in connection with a bona fide commercial offering. That may reflect carelessness in drafting, but the Panel is not inclined to make that assumption. The Respondent offers a reason for parking the Domain Names: the advice of counsel to keep silent while litigation and settlement negotiations are ongoing. This is plausible, but it does not avoid the problem that the Domain Names have not been used for the stated noncommercial or fair use purpose four years after registration.
The Complainant goes on to argue that in any event the Domain Names have not been used "noncommercially", because the Registrar advertises its own services on its default parking pages, and the Domain Names misleadingly divert consumers for (the Registrar's) commercial gain. Even those Domain Names with the ".exposed" gTLD could be mistaken as affiliated with the Complainant, since "exposed" could refer to property hazards such as exposed pipes. Moreover, according to the Complainant, this use tarnishes the Complainant's marks because visitors, finding only the Registrar's parking pages, may infer that the Complainant "has gone out of business or is not devoting attention to its online marketing or services." These latter arguments overstate the case, in the Panel's view. It is far more likely that the word "exposed" in the gTLD will be viewed by most Internet users exactly as the parent applicant, Donuts Inc., envisioned, for "online free expressions of criticism" (see "www.icannwiki.org/.exposed"), rather than as indicating another site sponsored by the Complainant. It also seems improbable that consumers will leap to the conclusion that the Complainant, with its extensive advertising, thousands of agents, and billions of dollars in revenues, has gone out of business, simply because they run into a Registrar's parking page.
But it is problematic that the Respondent has not used the Domain Names for criticism and has left them parked for years for the Registrar's commercial benefit, even if that is not as egregious as a pay-per-click advertising portal. (It would have been a simple matter to post a "coming soon" or "under construction" message as a placeholder instead.) The Respondent has allowed a form of commercial use, employing another party's trademarks, to continue for years, and that is inimical to the fundamental notion of fairness underlying the Policy. See WIPO Overview 3.0, sections 2.4, 2.5.
In sum, the Complainant made a prima facie case on this element of the Complaint, and the Respondent failed to meet its burden of establishing a legitimate "fair use" interest, because the Domain Names have been parked long-term and commercially rather than used for a criticism site. The Complainant prevails on the second element, and many of the same facts are relevant in considering the issue of bad faith, below.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following cited by the Complainant (in which "you" refers to the registrant of the domain name):
"(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Complainant's reliance on paragraph 4(b)(ii) is not entirely apt. Despite the Respondent's registration of seven Domain Names (four of them in the ".exposed" gTLD, which the Complainant would hardly be likely to register except possibly as a defensive measure), the Complainant has an online presence with a simple and concise domain name, <amfam.com>, corresponding to its AMFAM mark. The Respondent has not been shown to have a history of cybersquatting or engaging in a pattern of holding trademark-based domain names hostage to trademark holders.
The Respondent also does not appear to have profited from the Domain Names, and paragraph 4(b)(iv) does not squarely fit these circumstances. While the Respondent undermined his case for legitimate interests under the second element of the Complaint, by not putting the Domain Names to use and allowing the Registrar to park them with an advertisement for the Registrar's services, it is hard to conclude that the Respondent registered the Domain Names for the purpose of misdirecting Internet users for commercial gain. Rather, it seems clear on this record that the Respondent was unhappy with the Complainant's handling of the Respondent's property insurance claim and meant to use the Domain Names to complain about it, and possibly to provide a forum for others to share similar stories. It is difficult to see how the Respondent would directly gain commercially from misdirecting Internet users, or how that would be effective, especially with the ".exposed" Domain Names, which consumers would be less likely to associate with the Complainant.
The Complainant also argues that the Respondent's conduct in entertaining an offer for the Domain Names from a third party (as reflected in a brief email exchange in the record) and in engaging in settlement negotiations with the Complainant demonstrate that the registration of the Domain Names was simply designed as leverage to induce a higher settlement. There is not enough evidence here to conclude that the Respondent never meant to publish critical commentary. He has not done so to date using the Domain Names, but he does have a history of making public comments about the insurance industry. In addition, the Complainant cites the "passive holding" doctrine (see WIPO Overview 3.0, section 3.3, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), which is not really apposite here, as the Respondent filed a Response with an articulated plan for the Domain Names, and the Domain Names have been in use by the Registrar in the interim.
The Respondent offers plausible reasons for registering the Domain Names to use for critical purposes, and the Complainant bears the burden of establishing bad faith. In the absence of a developed website associated with the Domain Names, there is little available evidence to test the Respondent's good faith intentions. Normally, where a domain name has been put to critical use, questions of legitimate fair use will have been addressed in the consideration of the second element of the complaint, and the respondent's good faith may be examined in light of the content of the respondent's website, in the context of the third element of the complaint. That is not possible here.
But in this case there are facts from which inferences can be drawn concerning the Respondent's bad faith, in the Policy sense of a culpable disregard for the legal rights of a trademark owner. The Respondent registered seven Domain Names, which might be considered excessive to establish a criticism site, and three of them on their face (those lacking the ".exposed" gTLD) would appear to be sponsored by the Complainant itself. WIPO panels considering the question of fair use under the second element have observed that domain names incorporating a trademark carry a high risk of implied affiliation, and the lack of critical terms in those three Domain Names does nothing to avoid that implication (see WIPO Overview 3.0, section 2.5.1). "Fundamentally, a respondent's use of a domain name will not be considered 'fair' if it falsely suggests affiliation with the trademark owner" (id., section 2.5).
Then, after registration, the Respondent simply parked the Domain Names. This was in June 2014, and the Respondent's lawsuit, which he gives as the reason for not publishing a criticism site, was not filed until sometime in 2015. While it is routine for some registrars to park undeveloped domain names by default to a landing page with advertising, this results in using a domain name that is confusingly similar to a trademark for commercial gain, even if the gain is not the registrant's. The registrant might still have an argument for legitimate fair use of the domain name and might be deemed to have registered and used the domain name in good faith, if the registrant acts reasonably promptly to remove the domain name from that default commercial use by the registrar. See, e.g., Equifax Inc. v. Robert Dow, Warpaint Resources LLC, WIPO Case No. D2017-1882; Amylin Pharmaceuticals, Inc. v. Watts Guerra Craft LLP, WIPO Case No. D2012-0486 (accepting noncommercial use by the respondent after a two-month default parking period by the registrar). Here, the Respondent, who remains responsible under the registration agreement for the use of the Domain Names containing the Complainant's trademarks, has allowed the Registrar to use them to advertise its own services for more than four years.
There is no reason to doubt that the Respondent objected to the Complainant's handling of the Respondent's insurance claim and contemplated criticizing the Complainant's decision and practices. However, from the very beginning and for the four years since, the Respondent has instead allowed another party to use the Domain Names, incorporating the Complainant's trademarks, to advertise its own commercial services. This conduct, along with the selection of numerous Domain Names including ones that on their face appear to be affiliated with the Complainant, strongly suggests a lack of regard for the Complainant's trademark rights, exceeding any necessary referential use of a mark for a legitimate complaint site. The Panel finds this to be bad faith within the meaning of the Policy.
The Panel concludes that the third element of the Complaint, bad faith, has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <americanfamilyclaims.com>, <americanfamilyclaims.exposed>, <amfamclaims.com>, <amfamclaims.exposed>, <amfaminsurance.exposed>, <amfampropertyclaims.com>, and <amfampropertyclaims.exposed> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: July 11, 2018