State Farm Mutual Automobile Insurance Company v. Mike Morgan
Claim Number: FA0803001159915
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 <ststefarm.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 11, 2008.
On March 11, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ststefarm.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 7, 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@ststefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant provides a wide variety of insurance and financial services to both consumers and businesses.
Complainant has used its STATE FARM service mark in connection with these services since 1930.
Complainant registered its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585).
Complainant also holds several other registrations for its
STATE FARM mark with other governmental authorities, including
Complainant has not authorized Respondent to use its STATE FARM service mark in any manner.
Respondent registered its <ststefarm.com> domain name on December 9, 2006.
Respondent’s <ststefarm.com> domain name resolves to a website which displays links to insurance products and companies which compete with the business of Complainant.
Respondent receives compensation in the form of click-through fees for this use of its domain name.
Respondent’s <ststefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights to or legitimate interests in the <ststefarm.com> domain name.
Respondent registered and uses the <ststefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of its STATE FARM mark
registrations with the USPTO and several other governmental authorities. This evidence is more than sufficient to
establish Complainant’s rights in its mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008):
Complainant
asserts rights in the mark through its registration of the mark with the
See also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Respondent’s <ststefarm.com> domain name is identical to Complainant’s mark with the exception that the domain name substitutes the “a” in Complainant’s mark with an “s.” This is a common typographical error, and does not detract from the overall impression left by the domain name from its use of Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in that complainant's mark with the letter “e”); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to a complainant’s TD WATERHOUSE name and mark).
Additionally, generic top-level domains (“gTLDs”) such as “.com” are irrelevant in evaluating whether a disputed domain name is confusingly similar to a competing mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.
Therefore, we find that Respondent’s <ststefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”
Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to these proceedings. Therefore, we may conclude that Respondent does not possess rights to or legitimate interests in the disputed domain name. See, for example, Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
We will, however, examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(c).
We begin by noting that there is no dispute that Respondent’s
domain name resolves to a website which displays links to websites that offer
insurance products and services which directly compete with Complainant’s
business. Such diversionary use of the
domain is 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). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum
Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to
redirect Internet users to a financial services website, which competed with
the business of a complainant, was not a bona fide offering of goods or
services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a
respondent was not using a domain name within the parameters of Policy ¶
4(c)(i) or (iii) where that respondent used the domain name to take advantage
of a complainant's mark by diverting Internet users to a competing commercial
site).
We also observe that Respondent does not appear to be commonly known by the disputed domain name. The pertinent WHOIS record reflects that Respondent is known as “Mike Morgan.” Moreover, Complainant alleges, and Respondent does not deny, that Complainant has not authorized Respondent to use its STATE FARM mark in any manner. We are comfortable in concluding that Respondent is not commonly known by the <ststefarm.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use a trademarked name).
Additionally, it is evident that Respondent is using a typo-squatted version of Complainant’s STATE FARM mark to operate a website which displays links to services which compete with the business of Complainant. This use is evidence that Respondent lacks rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of a complainant's LTD COMMODITIES mark and that this:
‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.
The Panel therefore finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny the allegation that it is using the
website resolving from its domain name to link to competing insurance
services. Respondent presumably profits
from this use through click-through fees, as alleged. Additionally, Respondent’s use of
Complainant’s mark creates a likelihood of confusion regarding the possible source
of the content resolving from the disputed domain name. This is a clear attempt by Respondent to
profit from the goodwill associated with Complainant’s mark. Therefore, we conclude that Respondent’s
actions constitute bad faith registration and use of the subject domain name pursuant
to Policy ¶ 4(b)(iv).
See AltaVista Co. v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website
featured links to third-party websites that offered services similar to those of
a complainant and took advantage of Internet users’ typing mistakes); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in
bad faith registration and use of domain names identical or confusingly similar
to a complainant’s mark to redirect Internet users to a website that offered
services similar to those offered by that complainant).
Additionally, Respondent is plainly using a domain name which includes a common typographical error of Complainant’s STATE FARM mark. Respondent’s typo-squatting is itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting … is the intentional misspelling of words with [the]
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.
See also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003): “Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”
For these reasons, the Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ststefarm.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 25, 2008
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