State Farm Mutual Automobile Insurance Company v. Stephane Pacaud
Claim Number: FA0801001130678
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarn.com>, registered with Gmo Internet, Inc. d/b/a Onamae.com and Discount-Domain.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 19, 2008, a Japanese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2008 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarn.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarn.com> domain name.
3. Respondent registered and used the <statefarn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company,
is a nationally known company which has been doing business under the STATE
FARM mark since at least 1930.
Complainant engages in business in both the insurance and financial
services industry, and has expended substantial time, effort and funds to
develop the good will associated with the STATE FARM mark. Complainant holds registrations with several
governmental authorities for the STATE FARM and related marks, including a
service mark registration with the United States Patent and Trademark Office
(“USPTO”) (i.e. Reg. No. 1,979,585 issued
Respondent registered the <statefarn.com>
domain name on
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.
The Panel finds that Complainant has adequately established
its rights in the STATE FARM mark through its numerous trademark and service
mark registrations with various governmental authorities in accordance with
Policy ¶ 4(a)(i).
See Toray Indus., Inc. v. Yassievich, FA 998100
(Nat. Arb. Forum July 12, 2007) (“The Panel finds that Complainant has
established rights in the Trademark, by reason of its U.S. trademark
registrations, which are valid and subsisting.
The U.S. Trademark Act is clear that the certificate of registration on
the Principal Register, as here, is prima
facie evidence of the validity of the registered mark and the registrant's
exclusive right to use the mark in commerce in on or in connection with the
goods specified in the registration.”); see also Honeywell Int’l Inc.
v. r9.net, FA 445594 (Nat. Arb. Forum
The <statefarn.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety, with the modification of replacing the letter “m” in the mark with the letter “n.” Especially since this letter is next to the letter “m” on the QWERTY keyboard, this modification to the mark does not adequately distinguish the disputed domain name. Moreover, the addition of the generic top-level domain “.com” also does not create a mark capable of overcoming a confusingly similar analysis as a top-level domain is a required element of all domain names. See Google, Inc. v. Goog LR, FA 98462 (Nat. Arb. Forum Sept. 28, 2001) (finding the respondent’s <googlr.com> domain name confusingly similar to Complainant’s GOOGLE mark because the only difference between the domain name and the mark was the last letter); see also Anheuser – Busch, Inc. v. Holix Inc., FA 979961 (Nat. Arb. Forum June 19, 2007) (“The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain (“gTLD”), “.com,” is to be ignored.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires Complainant to demonstrate a prima facie case that Respondent lacks rights and legitimate interests in the <statefarn.com> domain name. Once Complainant satisfies its burden, the burden shifts to Respondent to present evidence that it possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel, upon examination of the Complaint, finds that Complainant has satisfied its burden. Although Respondent has not replied to the Complaint, and as such the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name, the Panel chooses to examine all the evidence with respect to Policy ¶ 4(c) before making a final determination. See Document Tech., Inc. v. Int’l Elec. Commc'ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s WHOIS information indicates that Respondent is “Stephane Pacaud.” Additionally, Complainant contends that Respondent is not authorized to use its STATE FARM mark in any way. Thus, the Panel determines that Respondent is not commonly known by the <statefarn.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The website that resolves from the <statefarn.com> domain name displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. The Panel finds that this use is not in connection with either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The disputed domain name is a
typosquatted version of Complainant’s STATE FARM mark, as the <statefarn.com>
domain name replaces the letter “m” in the mark with the letter “n,” which is
located next to the letter “m” on the QWERTY keyboard. As such, the nature of the disputed domain
name itself indicates a lack of rights and legitimate interests under Policy ¶
4(a)(ii). See Microsoft Corp. v. Domain Registration Phil., FA 877979 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Due to the confusingly similar nature of the <statefarn.com> domain name to Complainant’s mark, the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the disputed domain name and resulting website. Additionally, the Panel finds that Respondent is attempting to profit from the operation of the <statefarn.com> domain name through the accrual of click-through fees for the hyperlinks displayed on the resulting website. Thus, the Panel finds evidence of bad faith registration and use under 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
As stated above, the <statefarn.com>
domain name is a typosquatted version of Complainant’s STATE FARM mark. Therefore, this indicates bad faith
registration and use under Policy ¶ 4(a)(iii). See Nextel Commc'ns Inc.
v. Geer, FA 477183 (Nat.
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 <statefarn.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 31, 2008
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