Skip to content
January 5, 2011 / Nate Harris

Fireman’s Fund Gets Burned In Attempt To Recover firemansfundblog.com

Summary of Fireman’s Fund Insurance Company v. Steve Schwartz
(Nat. Arb. Forum Claim No. 1355350)

Filed: October 28, 2010; Decided: December 15, 2010 (Panelist: Paul M. DeCicco)

Disputed domain name: <firemansfundblog.com>

firemansfundblog.com

The Parties

Complainant Fireman’s Fund Insurance Company (“Fireman’s Fund”) and its predecessors have offered insurance and related services under the mark FIREMAN’S FUND since 1896. Since 1974, Fireman’s Fund has owned a trademark registration for its mark.

Respondent Steve Schwartz of Colorado registered the disputed domain on in August 2010. Though he claims to have plans to “use it for free speech as a comment site.” However, at the time the complaint was filed, the disputed domain resolved to GoDaddy’s generic placeholder page, which featured sponsored links (from which GoDaddy, not Mr. Schwartz, derives payment). Though Mr. Schwartz apparently tried to remove the placeholder page, he was not allowed to do so until this proceeding was concluded.

Identical or Confusingly Similar

The Panel finds that Fireman’s Fund has rights in its FIREMAN’S FUND mark. The addition of the word “blog” does not avoid a finding that the disputed domain is confusingly similar to that mark.

Rights or Legitimate Interests

Fireman’s Fund satisfies its initial burden of showing that Mr. Schwartz lacks rights or legitimate interests in the disputed domain. In particular, it has made out a prima facie case that Mr. Schwartz is not operating a business  in connection with the domain; nor has he been authorized by Fireman’s Fund to register or use the disputed domain. (Mr. Schwartz does not dispute either argument.) Mr. Schwartz has not rebutted the prima facie case by showing that he has prepared to make a bona fide offering of goods or services. Similarly, Mr. Schwartz “cannot show that he is making a legitimate non-commercial or fair use of the domain name, even though he may intend such use of the domain name in the future.”

Therefore, Fireman’s Fund has made the required showing that Mr. Schwartz does not have rights or legitimate interest in the disputed domain.

Bad Faith

The Panel finds that Fireman’s Fund has failed to prove bad faith:

Respondent’s claimed intended use of the at-issue domain name is for a blog concerning Fireman’s Fund. There is no direct evidence to the contrary. The at-issue domain name was recently registered and thus no adverse inference may be drawn since Respondent’s claimed intent in registering the domain name has not yet been implemented. Additionally, there is nothing in the record which suggests that Respondent trades domain names, registers the marks of others as domain names, or otherwise may be following a pattern of conduct which might impeach his claims regarding his intended use of the <firemansfundblog.com> domain.

The Panel finds that it is GoDaddy’s standard practice to create a placeholder page with advertising related to the domain name.  The placeholder page stays in place until the registrant redirects it. Therefore, bad faith cannot be inferred:

[W]hile Respondent may be responsible for the referred webpage in that he set the wheels-in-motion for the holding page to be displayed, there is no evidence that Respondent intended the particular webpage and its content ever be linked to the at-issue domain name.

In the Panel’s view, while Mr. Schwartz may not have been able to demonstrate rights or legitimate interests under the previous prong, it is too soon for a finding of bad faith:

Therefore, although the fair use criteria under Policy ¶ 4(c)(iii) is inapplicable to demonstrate Respondent’s rights and interests in the domain name because the at-issue domain name is not being used, Respondent’s reasonable future fair use of the domain name for non-commercial commentary, absent any compelling evidence to the contrary, precludes a finding of bad faith registration and use.

Decision

The complaint is denied. However, “[w]hile it is beyond the charge of any UDRP panel to order the Respondent to do so, the Panel expects that Respondent will immediately disconnect its <firemansfundblog.com> domain name from the registrar’s holding page as he promised in his signed pleading.”

Commentary

I found this to be a well-written and well-reasoned decision that cites relevant precedent. Definitely worth a read.

Epilogue

Mr. Schwartz has apparently taken the Panel’s admonishment to heart. <firemansfundblog.com> no longer points to the placeholder page. It now prominently displays the text: “Please note the following points: (1.) This site is not affiliated in any manner with Fireman’s Fund Insurance Company (2.) This is a non-commercial site – no products or services are offered (3.) This is a blog site – all opinions/comments are those of the indivduals involved”

Advertisements

One Comment

  1. Dan T. / Jan 5 2011 9:20 am

    If it’s a noncommercial site, he should have used firemansfundblog.org.

    However, neither does the company involved need that domain; if they wanted to have an official blog they could do it logically with a subdomain like blog.firemansfund.com.

Comments are closed.