State Farm Mutual Automobile Insurance Company v.
Claim Number: FA0802001153697
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 <statefarmcarinsurance.net>, registered with Namesdirect.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmcarinsurance.net> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmcarinsurance.net> domain name.
3. Respondent registered and used the <statefarmcarinsurance.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a leading company in the insurance and financial services industry. Complainant uses the STATE FARM INSURANCE mark in connection with the sale of insurance policies. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM INSURANCE mark (Reg. No. 1,125,010 issued September 11, 1979).
Respondent registered the <statefarmcarinsurance.net>
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 has established rights in the STATE FARM
INSURANCE mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
is confusingly similar to Complainant’s STATE FARM INSURANCE mark. Respondent’s disputed domain name contains
Complainant’s mark, adds a generic term associated with Complainant’s business
and adds the generic top-level domain (“gTLD”) “.net.” The same circumstances as in the instant case
occurred in Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd.,
D2000-1153 (WIPO Oct. 17, 2000), where the panel held that the disputed domain
name was confusingly similar to the complainant’s mark where the generic terms,
“brambles” and “equipment” implied that the disputed domain name was associated
with the complainant’s business. In the instant
case, the Panel also finds that the addition of a gTLD is irrelevant when
distinguishing the disputed domain name from Complainant’s mark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the <statefarmcarinsurance.net>
domain name. When Complainant makes a prima facie case in support of its allegations, the burden is
shifted to Respondent to prove that it does have rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case,
Complainant has established a prima facie
case. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO
Due to Respondent’s failure to respond to the Complaint, the
Panel assumes that Respondent does not have rights or legitimate interests in
the disputed domain name. See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO
Complainant asserts that Respondent is neither commonly
known by the <statefarmcarinsurance.net>
domain name, nor licensed to register domain names using the STATE FARM
INSURANCE mark. The Respondent’s WHOIS
information lists Respondent as “Susana Gonzalez, PanamaPROS
Complainant contends that Respondent is using the <statefarmcarinsurance.net> domain name in order to
attract Internet users to its website by creating a strong likelihood of
confusion with Complainant’s mark. The
disputed domain name displays a number of third-party links to websites in
competition with Complainant. The Panel
finds that intentionally diverting Internet users to a confusingly similar
domain name in competition with Complainant is neither a bona fide offering goods and services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also 24
Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to directly compete with
Complainant is evidence of bad faith.
The Panel finds that a registered domain name used primarily to disrupt
the business prospects of a competitor is a demonstration of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
Respondent’s use of the disputed domain name in order to attract Internet users to its website by creating a possiblity of confusion with Complainant’s mark and offering third-party links to competing websites is further evidence of bad faith. The Panel infers that Respondent receives click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes bad faith registration and use. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
In addition, Respondent’s offer to
sell the <statefarmcarinsurance.net>
for $500.00 is further evidence of bad faith.
The Panel finds that the circumstances indicating that Respondent has
registered the disputed domain names for the primary purpose of selling
illustrates a bad faith registration and use pursuant to Policy ¶ 4(b)(i). See
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 <statefarmcarinsurance.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 8, 2008
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