State Farm Mutual Automobile Insurance Company v. Michael Garcia
Claim Number: FA0806001210004
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Monke, of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Michael Garcia (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmautoglassclaims.net>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoglassclaims.net> 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 June 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 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@statefarmautoglassclaims.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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 <statefarmautoglassclaims.net> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmautoglassclaims.net> domain name.
3. Respondent registered and used the <statefarmautoglassclaims.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, has been providing a variety of insurance services since at least 1930. It has registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) for the underwriting and servicing of auto, homeowners, life and fire insurance (Reg. No. 1,979,585 issued June 11, 1996). It has operated a website since 1995 at the <statefarm.com> domain name.
The <statefarmautoglassclaims.net> domain name was registered on February 21, 2008. It resolves to a website that states it is “parked free courtesy of GoDaddy.com” and contains various links to numerous insurance products and companies, many of which are direct competitors of Complainant.
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 sufficiently established rights in the STATE
FARM mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See Reebok Int’l Ltd. v.
Santos, FA 565685 (Nat. Arb. Forum Dec. 21,
2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’)
registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to
establish rights pursuant to Policy ¶ 4(a)(i).”); see also U.S. Office of Pers. Mgmt. v.
MS Tech. Inc., FA 198898 (Nat. Arb. Forum
Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICANN panel is not empowered to nor should it disturb that determination.”).
The <statefarmautoglassclaims.net> domain name contains Complainant’s STATE FARM mark
in its entirety followed by the generic group of terms and phrase “auto glass
claims.” It ends with the generic
top-level domain (“gTLD”) “.net.” It is
well-established that the inclusion of a gTLD is irrelevant to a Policy ¶
4(a)(i) analysis. Furthermore, the addition of generic
terms or a generic phrase does not distinguish a disputed domain name. This is especially true when the words or
phrase added describe the business or service provided under the subject
mark. Complainant engages in automobile
insurance services, and the disputed domain name adds the phrase “auto glass
claims,” which specifically describes a service Complainant provides. Consequently, the Panel finds that
Respondent’s <statefarmautoglassclaims.net> domain name is confusingly
similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). 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.”); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); 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 concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name before the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name). The Panel finds that Complainant has met this threshold, and that it is now incumbent upon Respondent to provide evidence rebutting Complainant’s contentions and arguments. See Document Techs., 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
However, no response has been filed in this case. Therefore, the Panel may presume that
Respondent has no rights or legitimate interests, but will nonetheless examine
the record in consideration of the elements listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); see also
Woolworths plc. v. Anderson,
D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation
to use the domain name for a legitimate purpose, the burden of proof lies with
the respondent to demonstrate that it has rights or legitimate interests).
Nothing in Respondent’s WHOIS information or anything else
in the record indicates that Respondent is or ever was commonly known by the
disputed domain name. Furthermore,
Respondent has not sought, nor received permission or license from Complainant
to use the STATE FARM mark in any way. Accordingly, the Panel finds that
Respondent is not commonly known by the <statefarmautoglassclaims.net>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
The <statefarmautoglassclaims.net> domain name
resolves to a parked website featuring various links to products and services
in direct competition with those offered under Complainant’s mark. This does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26,
2007) (rejecting the respondent’s contention of rights and legitimate interests
in the <bravoclub.com> domain name because the respondent was merely
using the domain name to operate a website containing links to various
competing commercial websites, which the panel did not find to be 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 also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business 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).”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The fact that the disputed domain name contains numerous
links to competitors of Complainant suggests that Respondent registered and is
using the disputed domain name for the purpose of disrupting Complainant’s
business by misdirecting Internet users in search of Complainant’s website to
its own. The Panels finds that this
disruptive use establishes that Respondent registered and is using the <statefarmautoglassclaims.net>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes
that by redirecting Internet users seeking information on Complainant’s
educational institution to competing websites, Respondent has engaged in bad
faith registration and use pursuant to Policy ¶
4(b)(iii).”).
Also, the Panel presumes that these links provide some sort
of financial compensation or commercial benefit from either click-through or
other related fees. This in conjunction
with the fact that the disputed domain name is confusingly similar to
Complainant’s mark leads the Panel to conclude that Respondent has registered
and is using the disputed domain name with the intent of commercially
benefiting from the confusing similarity between the disputed domain name and
Complainant’s mark. This establishes
further evidence that Respondent registered and is using the <statefarmautoglassclaims.net>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”);
see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmautoglassclaims.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 29, 2008
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