Complainant is Factory Mutual Insurance Company of the United States of America (“U.S.A.”), represented by Venable, LLP, also of the U.S.A.
Respondent is Rhianna Leatherwood of the U.S.A.
The disputed domain name <fmglobalmedia.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2009. On February 3, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 3, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing the contact details, and confirming other details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 4, 2009.
The Center appointed Debra J. Stanek as the sole panelist in this matter on March 10, 2009. 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.
Complainant, which was founded in the 1830s, has for many years offered insurance and loss prevention and related services worldwide, offering services through the Internet that include access to multimedia presentations. For some time, it has done business under the name “FM Global”, and since 1999 has adopted and used the mark FM GLOBAL. It owns trademark registration for the FM GLOBAL mark in the U.S.A., Australia, Canada, and the European Community. It also has an internal division known as “FM Global's Multimedia Services”.
The disputed domain name was registered in September 2008. At some point, the domain name resolved to a website that contained links to third party websites, including to that of Complainant and its competitors. In response to a cease and desist letter from Complainant's counsel, counsel for Respondent generally denied any wrongdoing.
Complainant has provided comprehensive insurance products and property loss prevention services for almost two centuries.
The FM GLOBAL brand is used worldwide. Complainant offers its services to thousands of businesses worldwide generating approximately USD4 billion in annual premiums.
Complainant adopted the FM GLOBAL in 1999 and owns trademark registrations in the U.S.A., Australia, Canada, and the European Community.
The domain name should be considered confusingly similar to Complainant's mark because Complainant's mark is well-known, the domain name contains the mark and the generic term “media”.
Further, use of “media” is related to Complainant, which communicates with its customers in various ways over the Internet, including media presentations. Complainant also has a multimedia services department that produces those presentations.
Complainant's rights predate Respondent's registration of the domain name. Complainant began using FM GLOBAL as its central brand at least as early as 1999. Respondent registered <fmglobalmedia.com> in 2008.
Respondent is not an authorized user of the FM GLOBAL service mark. Respondent registered and has used the <fmglobalmedia.com> domain name for a website that contained pay-per-click links to Complainant and to others in the field of insurance and risk management.
Because FM GLOBAL is a unique and well-known trademark, it is inconceivable that Respondent has any legitimate rights to the name “FM Global Media”, particularly because, prior to Complainant's demand letter, Complainant used the domain name for a website with pay-per-click links to companies in the same business as Complainant, as well as to Complainant's own website.
Complainant began using the FM GLOBAL mark in 1999. Respondent acquired the <fmglobalmedia.com> domain name in 2008 and has not used it in connection with a bona fide business.
Moreover, Respondent registered and used the domain name for a website that contained pay-per-click links in the field of insurance and risk management, as well as a link to Complainant's website. That link conclusively proves that there is a real connection between Respondent's motivation and Complainant's mark.
Respondent has not used the domain name in connection with a bona fide business. The use of pay-per-click link services is not a legitimate commercial use, under the UDRP, when all other factors favor Complainant, and is proof of bad faith when the links exploit Complainant's mark.
After being advised of Complainant's concerns, Respondent failed to respond to the substance of Complainant's letter.
Respondent did not reply to Complainant's contentions.
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) it is identical or confusingly similar to a mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to it;
(iii) it has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Complainant has established its rights in the mark FM GLOBAL by virtue of the evidence of its United States federal trademark registration.
The disputed domain name is not identical to Complainant's mark. However, it includes Complainant's FM GLOBAL mark in its entirety and follows it with the generic term “media”. The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic. Here, the addition of the word “media” after Complainant's mark (even absent the space between “FM”, “global”, and “media” and the addition of the generic top-level domain “.com”, which are not relevant for these purposes), does nothing to effectively differentiate or distinguish the domain name from Complainant's mark, which remains the dominant portion of the domain name.
Accordingly, the Panel finds that Respondent's domain name is confusingly similar to a mark in which Complainant has rights.
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples by which a respondent might demonstrate rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
It does not appear that Respondent engaged in – or could under the circumstances have engaged in – any legitimate use of the domain name. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is commonly known by the domain name.
It does not appear that Respondent is making a legitimate noncommercial or fair use of the domain name. It appears that the domain name has been used to create click-through revenue for the registrar or Respondent. As a general matter, the Panel is of the view that such a use is not a bona fide offering of goods or services.
The Panel finds that Complainant has made a prima facie showing as to this element. Respondent, who has not replied, has not rebutted this showing.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name.
Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor, (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant's rights in its mark, which are well established, long predate Respondent's registration and use of the domain name. Based on the printout of one of the pages from the “www.fmglobalmedia.com” website, Respondent should have been aware of Complainant's FM GLOBAL mark and corresponding services, which among the links included.
Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services.
Under these circumstances, combined with the adverse inferences drawn by Respondent's failure to respond, the Panel finds that Complainant has established that Respondent has registered and is using the domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <fmglobalmedia.com> be transferred to Complainant.
Debra J. Stanek
Dated: March 17, 2009