State Farm Mutual Automobile Insurance Company v. Brenden Rice
Claim Number: FA0706001002761
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Mark
O'Flaherty, of State Farm Mutual Automobile Insurance
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onstatefarmhomeinsurance.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.
On June 12, 2007, Moniker Online Services, Inc., confirmed by e-mail to the National Arbitration Forum that the <onstatefarmhomeinsurance.com> domain name is registered with Moniker Online Services, Inc., and that Respondent is the current registrant of the name. Moniker Online Services, Inc., has verified that Respondent is bound by the Moniker Online Services, Inc., registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a prominent provider of insurance and financial services.
Since 1930, Complainant has utilized the STATE FARM mark in promotion of its goods and services, and currently holds several trademark registrations for the STATE FARM mark, including STATE FARM, Reg. No. 1,979,585, registered with the United States Patent and Trademark Office (“USPTO”) in 1996.
Additionally, Complainant currently maintains the <statefarm.com> domain name as a resource for information relating to its insurance and financial product offerings.
Respondent is not licensed to register domain names incorporating Complainant’s STATE FARM mark.
Respondent is in no way associated or affiliated with, or sponsored by, Complainant.
Respondent is not commonly known by the disputed domain name.
Respondent registered the <onstatefarmhomeinsurance.com> domain name on January 18, 2007.
Respondent’s domain name currently resolves to a website containing links to various insurance products and services, including those of Complainant’s competitors.
Respondent’s <onstatefarmhomeinsurance.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the domain name <onstatefarmhomeinsurance.com>.
Respondent registered and uses the <onstatefarmhomeinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of a mark with a trademark authority demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007): “Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
Respondent’s <onstatefarmhomeinsurance.com> domain name bears a confusing similarity to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i). The disputed domain name is a conglomeration of Complainant’s registered STATE FARM mark; the common terms “on,” “home,” and “insurance;” and the generic top-level domain “.com.” It is, of course, well settled that the inclusion of a generic top-level domain is irrelevant in evaluating whether a domain name is identical or confusingly similar to Complainant’s STATE FARM mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark). Moreover, the addition of generic terms to Complainant’s mark, particularly those that describe Complainant’s business, does not distinguish Respondent’s <onstatefarmhomeinsurance.com> domain from Complainant’s STATE FARM mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.
See also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to a complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which that complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Before the burden shifts to Respondent to demonstrate rights or legitimate interests in the <onstatefarmhomeinsurance.com> domain name, Complainant must first make out a prima facie case demonstrating Respondent’s lack thereof. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that a complainant must show that a respondent has no rights to or legitimate interests in the subject domain name, and that, once a complainant makes this initial showing, the burden of production shifts to a respondent to rebut that complainant’s allegations); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it has rights or legitimate interests in a domain name).
We may, of course, infer from Respondent’s failure to respond to the Complaint that it has no rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” See also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights or legitimate interests in a domain name where that respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, we will nonetheless examine the record to determine whether there is any basis for determining that Respondent has any rights or legitimate interests in it domain name under Policy ¶ 4(c).
In this connection, we first note that Respondent’s disputed domain name resolves to a website displaying information regarding the purchase of insurance products of Complainant’s competitors. Such use by Respondent does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links to that complainant’s competitors, was not a bona fide offering of goods or services); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000):
The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.
In addition, the record reflects that Respondent has failed to offer any evidence, and there is no evidence in the record, to refute Complainant’s assertion that Respondent is not commonly known by the disputed domain name. Further, Respondent’s WHOIS information fails to demonstrate that Respondent is commonly known by the <onstatefarmhomeinsurance.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark). Accordingly, we conclude that Respondent has failed to demonstrate any rights or legitimate interests in the <onstatefarmhomeinsurance.com> domain name pursuant to Policy ¶ 4(c)(ii).
Finally, there is nothing in the record before us to suggest that Respondent is making a legitimate noncommercial or fair use of the contested domain name as contemplated in Policy ¶ 4(c)(iii).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We are entitled to and do infer from the uncontroverted evidence before us that Respondent’s use of the <onstatefarmhomeinsurance.com> domain name to resolve to a website linking consumers to goods and services offered by Complainant’s competitors that Respondent’s conduct is an attempt by it to benefit commercially from the likelihood of confusion as to a possible affiliation with Complainant generated by Respondent’s incorporation of Complainant’s mark in the domain name. Such use of the domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.
See also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of a domain name to resolve to a website where services similar to those of a complainant are offered to Internet users is likely to confuse users into believing that that complainant is the source of or is sponsoring the services offered at the site); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered the domain name <statefarmnews.com> in bad faith where that respondent intended to use a complainant’s marks to attract the public to the website without permission from that complainant).
In addition, we are convinced that this Respondent registered the domain name <onstatefarmhomeinsurance.com> with at least constructive knowledge of Complainant’s rights in the STATE FARM trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <onstatefarmhomeinsurance.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 25, 2007
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