State Farm Mutual Automobile Insurance Company v. Robert Haller
Claim Number: FA0804001180992
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 <statefarmglassclaims.com>, registered with Godaddy.com, 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 April 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 25, 2008.
On April 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmglassclaims.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 April
25, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 15, 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@statefarmglassclaims.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 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 is engaged in both the insurance and the financial services industry.
Complainant registered the STATE FARM service mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585).
Complainant maintains that it has not licensed or authorized Respondent to use the STATE FARM mark.
Respondent registered the disputed <statefarmglassclaims.com> domain name on March 15, 2007.
Respondent uses the domain name to operate a web page containing links to insurance products and companies in competition with the business of Complainant.
Respondent benefits commercially from the exploitation of the STATE FARM mark and the goodwill associated with it.
Respondent’s <statefarmglassclaims.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the domain name <statefarmglassclaims.com>.
Respondent registered and uses the disputed <statefarmglassclaims.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 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 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:
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 registered the STATE FARM mark with the USPTO, and has therefore established rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Complainant contends that the disputed <statefarmglassclaims.com> domain
name is confusingly similar to the STATE FARM mark. The domain name incorporates Complainant’s
mark in its entirety, and differs only by the addition of the two generic terms
“glass” and “claims” and the generic top-level domain (“gTLD”) “.com.” These generic terms are related to
Complainant’s insurance business. The
addition of generic terms does not distinguish a domain name from a competing
mark, particularly where the generic term is related to a complainant’s
business. See Arthur Guinness Son & Co.
(
Moreover, because all registered domain names are required to have a top-level domain, the addition of the gTLD “.com” is not relevant for distinguishing the disputed domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
Thus, we conclude that the disputed domain name is confusingly similar to the STATE FARM service mark pursuant to Policy ¶ 4(a)(i).
Complainant has the initial burden of showing that Respondent lacks rights to and legitimate interests in the <statefarmglassclaims.com> domain name. A panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) held that once a complainant asserts that a respondent has no rights 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.” See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
In the case before us, Complainant has made out a prima facie case under Policy ¶ 4(a)(ii), thereby shifting the burden to Respondent.
Because Respondent has failed to respond to the Complaint in
this proceeding, we may presume that Respondent has no rights to or legitimate
interests in the disputed domain name. See,
for example, Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), where a panel found that
failing to respond allows a presumption that a complainant’s allegations are
true unless clearly contradicted by the evidence. See Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
Nonetheless, we will consider the evidence of record to determine
if there is any basis for concluding that Respondent has rights to or
legitimate interests in the disputed domain name under Policy ¶ 4(c).
We begin by noting that Complainant asserts that it has not licensed or authorized Respondent to use the STATE FARM mark. Respondent does not deny this allegation. In addition, the pertinent WHOIS information indicates that the registrant is “Robert Haller,” which does not suggest that Respondent is commonly known by the <statefarmglassclaims.com> domain name. Thus, we conclude that Respondent is not commonly known by the disputed domain name under 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant also asserts that the disputed domain name
resolves to a website which is parked and contains links to competing
websites. In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), a panel found that a respondent was not using a
domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because that
respondent used the domain name to take advantage of a complainant's mark by
diverting Internet users to a competing commercial site. Here, we likewise find that Respondent’s use
is 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). See also
Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that a respondent was not using domain names for a bona
fide offering of goods or services or a legitimate noncommercial or fair
use because that respondent used the domain names to divert Internet users to a
website that offered services in completion with those offered by a complainant
under its marks).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent benefits commercially from its exploitation of the STATE FARM mark and the goodwill associated with it. Respondent does not deny this. We therefore conclude that Respondent’s use of the disputed domain is likely to create confusion as to the possible source, sponsorship, affiliation or endorsement of the website that resolves from it. And we conclude that Respondent’s use of the domain to display links to insurance-related websites is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where that respondent used the domain to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark where a domain resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, it appears that Respondent registered the <statefarmglassclaims.com> domain name with at least constructive knowledge of
Complainant’s rights in the STATE FARM service
mark by virtue of Complainant’s prior registration of that mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
The Panel therefore 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 <statefarmglassclaims.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 30, 2008
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