State Farm Mutual Automobile Insurance Company v. Dwayne Gibbs
Claim Number: FA0801001140608
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmclaimsdept.com>, registered with Godaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 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 postmaster@statefarmclaimsdept.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <statefarmclaimsdept.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmclaimsdept.com> domain name.
3. Respondent registered and used the <statefarmclaimsdept.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, has used the STATE FARM mark since 1930 in
connection with its insurance company, and holds numerous trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the mark (i.e. Reg. No. 1,979,855 issued
Respondent, Dwayne Gibbs, registered the <statefarmclaimsdept.com> domain name on September 17, 2007, and is using the disputed domain name to redirect Internet users to a website containing a list of hyperlinks advertising Complainant’s competitors’ insurance companies.
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.
Numerous panels have recognized Complainant’s well-established rights in the STATE FARM mark based on Complainant’s many USPTO registrations and longstanding continuous use of the mark. See, e.g., 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).”). Thus, this Panel easily concludes that Complainant has established rights to the mark pursuant to Policy ¶ 4(a)(i).
Complainant does not explicitly allege that the <statefarmclaimsdept.com> domain name is confusingly similar to its STATE FARM mark, but the Panel chooses to undertake this analysis. The <statefarmclaimsdept.com> domain name contains Complainant’s STATE FARM mark in its entirety, and adds the generic words “claims” and “dept,” a common abbreviation for “department.” These words are related to Complainant’s insurance business, and therefore render the disputed domain name confusingly similar. Since the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant under this analysis, the Panel concludes that Respondent’s <statefarmclaimsdept.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant explicitly alleges that Respondent does not have rights or legitimate interests in the <statefarmclaimsdept.com> domain name. The Panel finds that Complainant met its burden of successfully establishing a prima facie case pursuant to Policy ¶ 4(a)(ii), so the burden has shifted to Respondent to show that it does have rights or legitimate interests under this section of the Policy. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie 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).
Complainant alleges that Respondent is not commonly known
by, and has never conducted business under, the <statefarmclaimsdept.com> domain name. The WHOIS information, which lists Respondent
as “Dwayne Gibbs,” confirms this allegation.
Respondent is not affiliated with Complainant, and has not been
authorized to register the disputed domain name or use Complainant’s STATE FARM
mark within it. Thus, the evidence in
the record indicates Respondent is not commonly known by the <statefarmclaimsdept.com> domain
name. Consequently, the Panel finds that
Respondent lacks rights and legitimate interests 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 <statefarmclaimsdept.com> domain name to display a list of hyperlinks advertising Complainant’s competitors’ insurance companies. Such use constitutes 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), especially since Respondent likely profits by earning click-through fees for each redirected Internet user. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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 also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of the <statefarmclaimsdept.com>
domain name disrupts Complainant’s business by diverting Internet users to the
websites of Complainant’s competitors.
Such registration and use 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 use is also likely to confuse Complainant’s
customers as to the source, sponsorship, affiliation, and endorsement of the
content advertised on Respondent’s website that resolves from the <statefarmclaimsdept.com> domain
name. Respondent is profiting off the
goodwill associated with Complainant’s STATE FARM mark by earning click-through
fees for each redirected Internet user.
The Panel finds this use to constitute bad faith registration and use as
contemplated by 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 Respondent 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
Asbury Auto. Group,
Inc. v.
Finally, the Panel notes that Complainant is a prominent
insurance company that has used the STATE FARM mark for almost 80 years. In the Complaint, Complainant cites twelve
previous UDRP cases from the past eight years in which National Arbitration
Forum panels have acknowledged Complainant’s rights in the STATE FARM mark, and
ordered infringing disputed domain names to be transferred from the respondents
to Complainant. This evidence establishes
that Respondent knew, or at least should have known, of Complainant’s rights to
the STATE FARM mark at the time it registered the <statefarmclaimsdept.com> domain name. Based upon this actual or constructive
knowledge, it is easy for this Panel to conclude that Respondent registered and
used the <statefarmclaimsdept.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See
Ty Inc. v. Parvin, D2000-0688 (WIPO
Nov. 9, 2000) (finding that the respondent’s registration and use of an identical
and/or confusingly similar domain name was in bad faith where the complainant’s
BEANIE BABIES mark was famous and the respondent should have been aware of it);
see also
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 <statefarmclaimsdept.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 14, 2008
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