The Complainant is Brown and Brown Insurance Services of CA, Inc. of Lafayette, California, United States of America (“United States”), represented by Cobb Cole, PA, United States.
The Respondent is Joel Paprocki / Paprocki Insurance Agency of Austin, Texas, United States, represented by Wittliff | Cutter | Austin, PLLC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 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 February 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2018. Upon request of the Respondent, the due date for Response was automatically extended to March 8, 2018, as per 5(b) of the Rules. Upon stipulation of the Parties, the due date for Response was further extended to March 16, 2018, as per 5(e) of the Rules. The Response was filed with the Center on March 15, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on March 27, 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. 4. Factual Background
The Complainant is a subsidiary of Brown and Brown, Inc., a large insurance brokerage company providing insurance services since 1939. The Complainant has used the INSURE MY FOOD TRUCK mark in connection with the provision of insurance coverages for the gourmet food truck market since as early as 2012. The Complainant is the owner of a United States trademark registration for word plus design mark INSURE MY FOOD TRUCK, applied for on December 21, 2016, and registered by the United States Patent & Trademark Office (USPTO) on August 15, 2017, registration no. 5264698, for use with “insurance services, namely underwriting, issuance and administration of food truck and mobile restaurant insurance.”
The Complainant maintains a presence on social media, including the Complainant’s website, a Facebook page, and a Twitter page. The Complainant registered the domain name on February 20, 2013. The Complainant uses this domain name with its “Insure My Food Trailer” website.
The Respondent is an insurance agency founded in Austin, Texas in 2004. The Respondent offers insurance coverage for food trailers, food trucks, food carts, food events, food delivery, personal chefs, vendors, and caterers. The Respondent registered the domain names and on December 28, 2011 and July 12, 2012, respectively. The Respondent registered the disputed domain name on October 22, 2015. The disputed domain name currently resolves to the Respondent’s “” website. The Respondent maintains a presence on social media, including reviews on the Respondent’s website, Facebook and Yelp. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a subsidiary of Brown and Brown Inc., the world’s sixth largest insurance brokerage company, and has been providing insurance services since 1939. The Complainant explains that in 2012 it established a program to provide comprehensive insurance coverage for the gourmet food truck market – namely, “Insure My Food Truck.” The Complainant represents that since the first use of the INSURE MY FOOD TRUCK in 2012 the Complainant has sold more than 5,200 policies to food truck owners in the United States, representing more than USD 1,215,000 in revenue.
The Complainant asserts common law rights in INSURE MY FOOD TRUCK and proffers examples of the Complainant’s use of the mark with printed advertising and promotional materials since 2013, articles about the Complainant in various media services dating back to 2012, and online advertising materials dating back to 2012. The Complainant further submits a printout from the Complainant’s Facebook and Twitter pages with promotional materials featuring the INSURE MY FOOD TRUCK mark. The Complainant notes that the USPTO when registering the INSURE MY FOOD TRUCK did not restrict or limit the registration, find the phrase “Insure My Food Truck” to be descriptive, or require a disclaimer as a condition of registration.
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s INSURE MY FOOD TRUCK mark because it is comprised of three of the four words making up the Complainant’s mark and is used for identical services. The Complainant contends that as such the disputed domain name inevitably results in consumer confusion. According to the Complainant, incidents of actual confusion began within months of the Respondent’s registration of the disputed domain name and launch of the Respondent’s website going. The Complainant proffers incidents in which consumers were not sure whether their insurance policies had been obtained from the Complainant or from the Respondent, mistook the Respondent’s website for a “redesign” of the Complainant’s website, and thought that the Complainant and the Respondent were the same company.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has not been licensed to use the Complainant’s mark. The Complainant observes that the Respondent registered the disputed domain name some three years following the Complainant first use of the INSURE MY FOOD TRUCK mark, and submits that there was no reason for the Respondent to have registered a confusingly similar domain name other than to trade on the Complainant’s goodwill.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Wayback Machine Internet archive first captured a website using the disputed domain name on October 3, 2016, more than 4 years after the Complainant began using the INSURE MY FOOD TRUCK mark in commerce. The Complainant asserts that the Respondent was aware of the Complainant’s use of the domain name when registering the disputed domain name, since the Complainant had at least one prior conversation with the Respondent regarding the Respondent’s registration and use of . The Complainant contends that the Respondent registered and is using the disputed domain name to divert traffic to the Respondent’s website, offering insurance policies directly competitive with those offered by the Complainant under its INSURE MY FOOD TRUCK mark. The Complainant further asserts that the Respondent’s registered and is using the disputed domain name to disrupt the Complainant’s business. B. Respondent
The Respondent maintains it is one of the largest full-service insurance agencies for food vendors in the United States, and among the first to offer insurances specifically for food trailers.1 The Respondent relates that it concentrates on food and restaurant clientele, and specifically food trailers. The Respondent notes that Joel Paprocki helped establish the Austin Food Trailer Chamber of Commerce and remains actively involved in the association.
The Respondent submits there is a distinct difference between food “trucks” and food “trailers”, in that a food truck is a mobile vehicle with a kitchen while a food trailer is a motor-less trailer equipped with a kitchen that must be towed by another vehicle. The Respondent submits that food trucks and food trailers require different insurance coverages and different insurance carriers, and that the Respondent’s focus is largely on food trailers.
The Respondent explains that it registered the domain name in December 2011 and expanded its Internet presence in July 2012 by acquiring the domain name . The Respondent further states that in October 2012 it created a twitter profile that came to be known as “@InsureMyFood.” The Respondent asserts that the Complainant then registered the domain name to create confusion and palm-off the Respondent’s good will.
The Respondent notes that it registered the disputed domain name in October 2015 and thereafter launched a new and improved website in September 2016, offering insurance not only for food trailers, but also for food carts, commissary kitchens, restaurants, food vendors, chefs, and caterers. According to the Respondent, it was not until two years later that the Complainant filed its UDRP Complaint, which the Respondent maintains improperly seeks the transfer of the disputed domain name.
The Respondent denies that the disputed domain is confusingly similar to the Complainant’s asserted trademark. The Respondent submits that the Complainant uses its mark with insurance for food trucks, whereas the Respondent offers insurance underwriting for more than just food trucks. The Respondent further asserts that the word “truck” is not present in the disputed domain name. The Respondent further argues that the design elements of the Complainant’s mark, and in particular the image of a truck, effectively overtake the textual elements such that the Complainant’s trademark registration is insufficient to support standing under the UDRP. Because the disputed domain name makes no reference to a truck, the Respondent concludes the disputed domain name is not confusingly similar to the Complainant’s mark. The Respondent further explains that the Complainant’s citations to alleged instances of actual confusion are incorrect.
The Respondent asserts that the Complainant has failed to carry its burden under the second element of the Policy, but merely asserts without foundation that there was no reason for the Respondent to register and use the disputed domain name except to trade on the Complainant’s good will. Further, the Respondent maintains it has established rights and legitimate interests in respect of the disputed domain because the Respondent demonstrably was using the disputed domain name in connection with a bona fide offering of goods or services prior to receiving any notice of the disputed. According to the Respondent, it registered the disputed domain name in 2015, and began using the disputed domain name in 2016, long before the filing of the Complainant in February 2018.
The Respondent contends that the Complainant also has failed to carry its burden under the third element of the Policy. The Respondent represents that it did not register the disputed domain name with the intent to sell, rent, or otherwise transfer the disputed domain name to the Complainant, but rather has used and continues to use the disputed domain name in connection with a bona fide offering of insurance services. The Respondent submits that the disputed domain name was not registered to prevent the Complainant from utilizing its mark, as the Complainant has registered a domain name identical to the Complainant’s mark. The Respondent asserts that is has not engaged in cybersquatting and insists that the Complainant’s registration of following the Respondents registration of was done to cause confusion and trade on the Respondent’s good will. The Respondent points out that it contacted the Complainant to object to the Complainant’s use of this confusingly similar domain name.
The Respondent denies registering the disputed domain name to create consumer confusion with the Complainant’s mark. The Respondent notes that it began using the disputed domain name prior to the Complainant’s registration of its mark. The Respondent denies the Complainant’s claim that the Respondent copied content from the Complainant’s website, explaining that the glossary definitions the Complainant takes issue with are definitions provided by the government and use on other websites. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademark or service mark. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s INSURE MY FOOD TRUCK mark, in which the Complainant has established rights. The USPTO’s registration of the mark on the Principal Register creates a presumption of validity under United States trademark law. See Business Filings Incorporated v. John Thalacker D/B/A/ Traffico,WIPO Case No. D2010-1332.
In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. Applying this standard, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s INSURE MY FOOD TRUCK mark. In the attendant circumstances of this case, the omission of the word “truck” in the disputed domain name does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (gTLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy.4
The Respondent contends that the dominant portion of the Complainant’s mark is the design element featuring a truck, which the Respondent submits is so dominant that the word mark is insufficient to support standing under the UDRP. The Panel does not accept that argument. The Panel notes that the Complainant’s INSURE MY FOOD TRUCK mark was registered for use with “food truck and mobile restaurant insurance,” and as such the word element of the mark appears descriptive in relation to the covered goods or services. However, the Complainant’s mark had been used in commerce for approximately five years when the Complainant applied to register its mark with the USPTO. Under U.S. trademark law, substantially exclusive and continuous use of a mark by the applicant in commerce for five years constitutes prima facie evidence that the mark has acquired distinctiveness (or secondary meaning) as used with the applicant’s goods or services.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s INSURE MY FOOD TRUCK mark. Regardless, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s mark, and is using the disputed domain name to offer insurance products that compete directly with those offered by the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed 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 disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent maintains it is using and had used the disputed domain name in connection with a bona fide offering of goods or services for several years to prior to receiving any notice of this dispute. It appears from the record that the Complainant and the Respondent in the latter part of 2011 or early 2012 both became interested in what now appears to be described by insurance providers as “food truck insurance” and “food trailer insurance”.5 The Complainant registered the domain name on October 17, 2011. The Respondent subsequently registered the domain name on December 28, 2011, and the domain name on July 12, 2012. The Complainant then registered the domain name on February 20, 2013. Subsequently, the Respondent registering the disputed domain name on October 22, 2015.
The Panel considers it likely that the Respondent was aware that the Complainant had launched a website using the domain name when the Respondent registered the domain name in July 2012. Similarly, the Panel considers that the Complainant likely was aware of the Respondent’s registration of the domain name when the Complainant subsequently registered the domain name , which the Complainant since has used with its “Insure My Food Trailer” website, separate and apart from its “Insure My Food Truck” website.
The record reflects that the Respondent contacted the Complainant in June 2013 regarding the Complainant’s use of the domain name , which the Respondent asserted was causing confusion with the Respondent’s previously registered domain name. The Complainant elected to continue using with its “Insure My Food Trailer” website. Thereafter, the Respondent registered the disputed domain name , which the Respondent has since used with its “Insure My Food” website.
There is no indication in the record that the Complainant provided any notice of this dispute to the Respondent prior to filing the Complaint. As noted above the insurance products at issue have come to be referred to by other insurance providers as “ food truck insurance” and “food trailer insurance,” and these terms appear to have been in use by the time the Complainant registered its INSURE MY FOOD TRUCK mark in August 2017. Regardless, in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.
After careful consideration of the totality of facts and circumstances in the record, the Panel finds that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain name in bad faith. As noted above, the Complainant did not seek to register its mark for INSURE MY FOOD TRUCK mark for almost five (5) years after commencing use of the mark. The most logical explanation for a delay of this length is a concern that the USPTO might deny registration on the grounds that the mark was merely descriptive. As noted above, the Panel considers that the word elements of the Complainant’s mark are descriptive in relation to the covered goods or services. And as noted above, other insurance companies also refer to such insurance as “food truck insurance” and “food trailer insurance.” The Policy was never intended to permit a party who elects to register or use common or descriptive terms as a trademark to bar others from using such terms in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See M, LP v. Bill Zag and NWLAWS.ORG, supra. See also National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424.
For the reasons discussed under this and the preceding heading, the Panel is unable to conclude from the record before it that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s trademark rights. The circumstances of this case as set forth in the record reflect, on balance, a plausible good faith basis for the Respondent’s registration of the disputed domain name. The Complainant has not demonstrated to the satisfaction of the Panel that the Respondent’s proffered explanation is merely a pretext, or that the Respondent’s objective in registering the disputed domain name more likely than not was cybersquatting.
Accordingly, the Panel finds the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: April 13, 2018
1 The Respondent’s website represents that it was early 2012 when Joel Paprocki began working with underwriters to offer insurance coverage for food trailers.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein.
4 The meaning of a particular TLD may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
5 The Panel’s observation is based on materials submitted by the Parties, as well as online advertising of various insurance providers for “food truck insurance” and “food trailer insurance.”
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