Generic Top Level Domain Name (gTLD) Decisions

The Complainant is AFLAC Legal Division, Columbus, GA, USA ("Complainant") represented by Robin L McGrath, Alston & Bird. The Respondent is Simmons Enterprises, Morton, IL, USA ("Respondent").

The domain names at issue are "aflaccalifornia.com","aflactexas.com" and "aflacflorida.com", registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Karl V. Fink (Ret.) is Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 5, 2000; The Forum received a hard copy of the Complaint on October 10, 2000.

On October 9, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names "aflaccalifornia.com," "aflactexas.com," and "aflacflorida.com" are registered with Network Solutions and that the Respondent is the current registrant of the names. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") setting a deadline of November 1, 2000, 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@aflaccalifornia.com, postmaster@aflactexas.com, postmaster@aflacflorida.com by e-mail.

Respondent filed a Response. All submissions by the parties have been considered by the Panel.

On November 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

For the past eleven years, Complainant, American Family Life Assurance Company of Columbus ("AFLAC") has continuously used the AFLAC trade name and service mark to identify its high quality and well-known insurance products and services. Since 1989, AFLAC has spent hundreds of millions of dollars advertising the AFLAC name and mark, which is the subject of three incontestable federal service mark registrations and eleven domain name registrations ("AFLAC Mark"). As a result of its wide-spread and long-term use and promotion, the AFLAC Mark has come to be associated exclusively with AFLAC and its quality products and service.

Robert Simmons, the administrative contact of Respondent Simmons Enterprises, is a former licensed sales agent for AFLAC products who, without authorization from, and in direct violation of, his Associate’s Agreement with AFLAC, registered over 100 domain names that combine the term "AFLAC" with various geographically descriptive terms, including the names at issue in this dispute.

AFLAC has registered eighteen domain names in pursuit of its developing e-commerce capabilities. Eleven of these domain names begin with the mark "AFLAC."

The registration of AFLAC service marks are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by AFLAC in accordance with Sections 7(b) and 22 of the Trademark Act of 1946, 15 USC §§1057(b) and 1072. These registrations are now incontestable pursuant to Section 15 USC § 1115(b) and are conclusive evidence of AFLAC’s exclusive right to use the marks shown.

Until August 9, 2000, Mr. Simmons was an independent insurance agent, selling AFLAC insurance products pursuant to an Associate’s Agreement with AFLAC. Mr. Simmons resigned as an AFLAC agent on August 9, 2000.

AFLAC learned about Respondent’s infringing domain name registrations in March of 2000, when Mr. Simmons contacted AFLAC’s marketing department to propose a program to market AFLAC supplemental insurance over the Internet. AFLAC advised Mr. Simmons that ALFAC was not authorizing any agents to market any products over the Internet. Thereafter, AFLAC notified Mr. Simmons that he was not authorized to register or use the infringing domain names and demanded that he relinquish those names to AFLAC.

On May 1, 2000, AFLAC’s outside counsel sent Respondent a letter demanding that he immediately release the infringing domain names to AFLAC, which Respondent has refused to do. On August 9, 2000, Mr. Simmons’s counsel tendered Mr. Simmons’s resignation and further stated that instead of relinquishing the infringing domain names Respondent would seek to sell them to a third party or parties. Respondent continues to maintain the infringing domain names in its name.

The infringing domain names are confusingly similar to AFLAC Marks. Consumers will assume these names and any websites operating in connection therewith are owned, sponsored, or otherwise authorized by AFLAC.

AFLAC’s exclusive rights in the AFLAC Marks precludes Respondent’s unauthorized use of the marks in an unlawful manner. Mr. Simmons was an authorized AFLAC agent and his agreement clearly prohibited him from engaging him in any advertising or promotion of AFLAC products, which would include internet websites, without AFLAC’s prior approval. Respondent cannot claim to have rights or legitimate interests in the names.

Respondent registered the infringing domain names in bad faith. Respondent registered the names under the assumption that AFLAC would either buy them or enter into a lucrative joint venture with Respondent. Respondent has engaged in a pattern of conduct designed to deprive trademark owners of their rights to reflect the marks in corresponding domain names owned by AFLAC.

Respondent is clearly trying to attract users to its websites by trading on the good will that AFLAC has created in its AFLAC Marks. Any continued use of such names is clearly designed to cause confusion as to the source of Respondent’s websites.

B. Respondent

Respondent was an AFLAC sales agent and he planned to become one of the leading AFLAC associates by generating sales via the Internet. He had no intention of selling AFLAC products on the Internet without AFLAC’s approval.

He has never done any thing in bad faith or against AFLAC advertising and marketing guidelines or the State Insurance Regulations of the United States of America.

He had no intention of infringing on the AFLAC trademark and had no intention to sell the domain names to AFLAC or a competitor.

He has no intent to use the AFLAC Marks to direct consumers to his websites and to sell competitors insurance products.

Because of the frustrations and threats from AFLAC’s legal firm that he would never get to use the domain names, he tendered his resignation as an AFLAC agent on August 9, 2000.

This dispute is not about trademark infringement. It is about profitability and Fortune 500 companies squeezing out self-employed independent employees.

The registration of AFLAC service marks are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by AFLAC.

The infringing domain names are confusingly similar to AFLAC Marks. Consumers will assume these names and any websites operating in connection therewith are owned, sponsored, or otherwise authorized by AFLAC.

AFLAC’s exclusive rights in the AFLAC Marks precludes Respondent’s unauthorized use of the marks in an unlawful manner. Mr. Simmons was an authorized AFLAC agent and his agreement clearly prohibited him from engaging him in any advertising or promotion of AFLAC products, which would include internet websites, without AFLAC’s prior approval. Respondent has no rights or legitimate interests in the names.

Respondent registered the infringing domain names in bad faith. Respondent registered the names under the assumption that AFLAC would either buy them or enter into a lucrative joint venture with Respondent. Respondent has engaged in a pattern of conduct designed to deprive Complainant of its rights to reflect the marks in corresponding domain names owned by AFLAC.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain names are confusingly similar to Complainant’s mark AFLAC. See General Electric Co. v. Forddirect.com, Inc. D2000-0394 (WIPO June 22, 2000)(finding that adding the generic term "direct" to the Complainant’s mark (GE CAPITAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept 14, 2000)(finding that combining the generic term "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusingly similarity aspect of the ICANN Policy).

There is no question that the infringing domain names are confusingly similar to AFLAC’s marks and Respondent does not argue otherwise. Each of the infringing domain names contain the AFLAC Marks followed by a geographically descriptive term (Texas, California, and Florida). Consumers would assume that these domain names are owned, sponsored or otherwise authorized by AFLAC.

Complainant has proven this element.

Respondent has no rights or legitimate interest in the domain names in question. See State Farm Mutual Automobile Insurance Company v. Douglas LaFaive, FA 95407 (Nat. Arb. Forum Sept 27, 2000)(finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be a bona fide offering of goods or services").

Respondent has not shown any of the circumstances referenced in Rule 4(c) that would demonstrate he has rights or legitimate interests in the domain name.

Robert Simmons, the contact person for Respondent, had knowledge of Complainant’s marks and knew he had no right to make any use of the marks without permission of Complainant. Respondent, having no right to use the domain names, could not have made preparation to use them in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the domain names, and Respondent has not made a legitimate non-commercial or fair use of the domain names.

Complainant has proven this element.

Respondent registered and used the domain names in bad faith.

Complainant has proven this element.