national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Domain Park Limited

Claim Number: FA0708001072921

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company, One State Farm Plaza, A-3, Bloomington, IL 61710.  Respondent is Domain Park Limited (“Respondent”), Vaea Street, Level 2, Lotemau Centre, Apia, Samoa 0815, WS.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com>, registered with Moniker Online Services, Inc.

 

PANEL

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

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.

 

On August 31, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  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 September 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 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 postmaster@wwwstatefarmphotos.com, postmaster@statefarmretiree.com and postmaster@statefarminsurancebank.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names are confusingly similar to Complainant’s STATE FARM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names.

 

3.      Respondent registered and used the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, is a company that provides various insurance and financial services.  Complainant has been in business since 1930, and holds various trademark and service mark registrations in numerous jurisdictions for the STATE FARM mark and other variations of that mark, including with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,979,585 issued June 11, 1996).  Additionally, Complainant operates a website at the <statefarm.com> domain name.   

 

Respondent registered the <wwwstatefarmphotos.com> domain name on July 7, 2007, the <statefarmretiree.com> domain name on July 11, 2007 and the <statefarminsurancebank.com> domain name on July 16, 2007.  Respondent’s disputed domain names resolve to websites that display hyperlinks to third-parties in direct competition with Complainant.  Respondent has also offered to sell at least two of the disputed domain names to Complainant for $250 each.      

 

DISCUSSION

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 the 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:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s numerous registrations of the STATE FARM mark with the USPTO, as well as with other governmental authorities, adequately establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i).  See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").   

 

The <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) as the disputed domain names contain Complainant’s mark in its entirety with the addition of a generic word and the generic top-level domain (“gTLD”) “.com.”  Additionally, the <wwwstatefarmphotos.com> domain name adds the prefix “www” to the beginning of the domain name.  None of these modifications to Complainant’s mark sufficiently distinguish the disputed domain names, as Complainant’s STATE FARM mark remains the main element of each of the disputed domain names.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).      

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.  

 

Rights or Legitimate Interests

 

Complainant must establish a prima facie case that Respondent lacks rights and legitimate interest in the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names under Policy ¶ 4(a)(ii).  Once a complainant has met this burden, as Complainant has done in the instant proceeding, the burden shifts to Respondent to show rights or legitimate interests under the requirements of Policy ¶ 4(c).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).    

 

Respondent’s WHOIS information does not indicate that Respondent is known by any of the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names, and there is no evidence Complainant has authorized Respondent to use its mark in any way.  Accordingly, the Panel finds Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel finds that Respondent’s use of the disputed domain names to display websites that present hyperlinks to various third-party websites in direct competition with Complainant, presumably for Respondent's own commercial benefit through the accrual of click-through fees, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Additionally, evidence has been presented that Respondent attempted to sell at least two of the three disputed domain names to Complainant for an amount in excess of Respondent’s out-of-pocket costs.  Such an offer further demonstrates that Respondent lacks rights and legitimate interests in the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names under Policy ¶ 4(a)(ii).  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.     

 

Registration and Use in Bad Faith

 

Respondent has offered to sell at least two of the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names to Complainant.  Such action is indicative of bad faith registration and use under Policy ¶ 4(b)(i).  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

 

Additionally, Respondent’s use of the disputed domain names, which are confusingly similar to Complainant’s mark, to host websites that display hyperlinks to Complainant’s competitors demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).  

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwstatefarmphotos.com>, <statefarmretiree.com> and <statefarminsurancebank.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  October 10, 2007

 

 

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