State Farm Mutual Automobile Insurance Company v. Dean Gagnon
Claim Number: FA0710001087389
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <about-statefarm.info>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2007.
On October 1, 2007, Moniker Online Services Inc. confirmed by e-mail to the National Arbitration Forum that the <about-statefarm.info> 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 October 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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@about-statefarm.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <about-statefarm.info> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <about-statefarm.info> domain name.
3. Respondent registered and used the <about-statefarm.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, has conducted business under the STATE
FARM name since 1930 in both the insurance and financial services
industries. Complainant holds a
registered trademark with the United States Patent and Trademark Office
(“USPTO”) for the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996).
Respondent, Dean Gagnon, registered the <about-statefarm.info> domain name on June 18, 2007. Respondent is using the disputed domain name to display a list of hyperlinks advertising Complainant and its competitors’ products.
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.
Complainant asserts rights to the STATE FARM mark through its registration of the mark with the USPTO and extensive, longstanding use of the mark in commerce since 1930. Previous panels have conferred rights to the STATE FARM mark to Complainant based upon this evidence. See State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Nat. Arb. Forum Sept. 25, 2007) (finding that “[t]here can be no doubt that STATE FARM is a very famous mark, and Complainant has clearly established rights in the [mark]” pursuant to Policy ¶ 4(a)(i) based upon its numerous federal trademarks and use in commerce since 1930); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has successfully established rights to the STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <about-statefarm.info>
domain name incorporates Complainant’s entire STATE FARM mark without any
changes, and merely adds the word “about,” a hyphen, and the generic top-level
domain (“gTLD”) “.info.” The word
“about” is a generic word that does not detract from the overall impression of
Complainant’s STATE FARM mark; in fact, it gives Internet users the mistaken
belief that Respondent’s website that resolves from the disputed domain name
provides information regarding Complainant’s services. Furthermore, the hyphen and gTLD “.info.” are
irrelevant to this analysis. Therefore,
the Panel finds that Respondent’s <about-statefarm.info>
domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to
Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <about-statefarm.info> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facia (sic) showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is not licensed or authorized to use the STATE
FARM mark in any capacity. The WHOIS
information identifies Respondent as “Dean Gagnon”. Therefore, the Panel concludes that
Respondent is not commonly known by the <about-statefarm.info>
domain name pursuant to Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also
Instron
Corp. v. Kaner, FA 768859 (Nat. Arb.
Forum Sept. 21, 2006) (finding that the respondent was not commonly known by
the <shoredurometer.com> and <shoredurometers.com> domain names
because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip’t as the registrant of the disputed domain name and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute).
Respondent is using the <about-statefarm.info>
domain name to display a list of hyperlinks advertising Complainant and its
competitors’ products. The Panel finds
that such use does not constitute a bona
fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also
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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <about-statefarm.info>
domain name to display a list of hyperlinks advertising Complainant and its
competitors’ products. This is likely to
disrupt Complainant’s business by diverting potential customers to Respondent’s
website, and subsequently to the websites of Complainant’s competitors. The Panel therefore finds that Respondent’s
registration and use of the <about-statefarm.info>
domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See
Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum
Feb. 13, 2007) (finding that the respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed
domain name resolved to a website that displayed commercial links to the
websites of the complainant’s competitors); see
also David Hall Rare Coins v.
Respondent’s <about-statefarm.info> domain name, which is confusingly similar to Complainant’s STATE FARM mark, is likely to cause confusion among customers searching for Complainant’s insurance or financial services. Specifically, customers may become confused as to the source, affiliation, endorsement, or sponsorship of the competing services advertised by the links on Respondent’s website that resolves from the disputed domain name. Respondent presumably receives click-through fees for each redirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s <about-statefarm.info> domain name and the goodwill associated with Complainant’s STATE FARM mark. Therefore, the Panel finds that Respondent’s registration and use of the <about-statefarm.info> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <about-statefarm.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 16, 2007
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