national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Kevin Calder

Claim Number: FA0806001211212

 

PARTIES

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 Kevin Calder (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <statefarmautoinsuranceillinois.com>, <statefarmboatinsurance.com>, <statefarminsurancechicago.com>, <statefarminsuranceillinois.com> and <statefarmmotorcycleinsurance.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2008.

 

On June 20, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoinsuranceillinois.com>, <statefarmboatinsurance.com>, <statefarminsurancechicago.com>, <statefarminsuranceillinois.com> and <statefarmmotorcycleinsurance.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  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 July 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 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@statefarmautoinsuranceillinois.com, postmaster@statefarmboatinsurance.com, postmaster@statefarminsurancechicago.com, postmaster@statefarminsuranceillinois.com and postmaster@statefarmmotorcycleinsurance.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 24, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.     Complainant makes the following assertions:

 

Complainant provides insurance and banking products and services to its customers. 

 

Some of the insurance products and services Complainant offers cover automobiles, motorcycles and boats. 

 

Complainant markets its insurance products and services under its STATE FARM INSURANCE service mark, which it registered with the United States Patent and Trademark Office (“USPTO”) on September 11, 1979 (Reg. No. 1,125,010).

 

Complainant has never authorized Respondent to use the STATE FARM INSURANCE service mark. 

 

Respondent registered the disputed domain names on January 28, 2008. 

 

The disputed domain names each resolve to a parked website displaying links to insurance products and services that compete with Complainant’s business. 

 

Respondent’s <statefarmautoinsuranceillinois.com>, <statefarmboatinsurance.com>, <statefarminsurancechicago.com>, <statefarminsuranceillinois.com> and <statefarmmotorcycleinsurance.com> domain names are confusingly similar to Complainant’s STATE FARM mark.

 

Respondent does not have any rights or legitimate interests in the <statefarmautoinsuranceillinois.com>, <statefarmboatinsurance.com>, <statefarminsurancechicago.com>, <statefarminsuranceillinois.com> and <statefarmmotorcycleinsurance.com> domain name.

 

Respondent registered and used the <statefarmautoinsuranceillinois.com>, <statefarmboatinsurance.com>, <statefarminsurancechicago.com>, <statefarminsuranceillinois.com> and <statefarmmotorcycleinsurance.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain names registered by Respondent are 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 names; and

(3)   the domain names were registered and are being used by Respondent in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has provided evidence that it registered its STATE FARM INSURANCE service mark with the USPTO on September 11, 1979 (Reg. No. 1,125,010).  This adequately establishes Complainant’s rights in its STATE FARM INSURANCE mark for purposes of Policy ¶ 4(a)(i).  See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established a complainant’s rights in the mark under the Policy); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through its registration with the USPTO).

 

Respondent’s <statefarmautoinsuranceillinois.com>, <statefarmboatinsurance.com>, <statefarminsurancechicago.com>, <statefarminsuranceillinois.com> and <statefarmmotorcycleinsurance.com> domain names each contain Complainant’s STATE FARM INSURANCE mark with the insertion of the descriptive terms “auto,” “boat,” or “motorcycle,” and/or the geographic terms “Illinois” and “Chicago.”  The addition of descriptive and/or geographic terms to Complainant’s STATE FARM INSURANCE mark does not sufficiently distinguish the disputed domain names from Complainant’s mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term, especially where the generic terms have an obvious relationship to that complainant’s business); see also Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and geographic locations are confusingly similar to a complainant’s mark).  Additionally, the disputed domain names each contain the generic top-level domain “.com,” which is irrelevant in evaluating whether the disputed domain names are confusingly similar to Complainant’s mark, because a top-level domain is a required element of every 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.

 

Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i).

 

 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain names.  Initially, the burden lies with Complainant to establish a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names.  Once Complainant has produced a prima facie case, the burden shifts to Respondent to prove that it does have such rights or interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

Complainant has sufficiently established a prima facie case under Policy ¶ 4(a)(ii).  Respondent, for its part, has failed to file a Response in these proceedings.  Thus we may presume Respondent lacks rights and legitimate interests in the disputed domain names.  See also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). We will, however, examine the record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names within the parameters of Policy ¶ 4(c). 

 

We begin by noting that there is no dispute as to Complainant’s allegation to the effect that Respondent’s disputed domain names each resolve to a parked website displaying links to Complainant’s competitors in the insurance industry.  Such use of the disputed domain names is not 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 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 nor a legitimate noncommercial or fair use where that respondent used the names to divert Internet users to a website that offered services competing with those offered by a complainant under its marks).

 

We also observe that Respondent does not appear to be commonly known by the disputed domain names.  Indeed nothing in the record and nothing in the pertinent WHOIS information indicates that Respondent is known by any of the disputed domain names.  Additionally, Complainant alleges, and Respondent does not deny, that Complainant has never authorized Respondent to use its STATE FARM INSURANCE mark.  Therefore, we conclude that Respondent is not commonly known by the disputed domain names and thus has no rights or legitimate interests in the domains pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use the trademarked name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

We have already established that Respondent’s domain names each resolve to a parked website displaying links to other insurance businesses that compete with the business of Complainant.  This use of the disputed domain names constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008): “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”  See also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):

 

Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv). 

 

Additionally, Respondent presumably receives compensation for displaying links to Complainant’s competitors on the parked websites resolving from the disputed domain names.  Thus, we find that Respondent is attempting to profit from the goodwill associated with Complainant’s mark, which is further evidence of bad faith registration and use of the domains pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that where a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith 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 therefore finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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 <statefarmautoinsuranceillinois.com>, <statefarmboatinsurance.com>, <statefarminsurancechicago.com>, <statefarminsuranceillinois.com> and <statefarmmotorcycleinsurance.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  August 7, 2008 

 

 

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