State Farm Mutual Automobile Insurance Company v. Gfmis c/o Pongphap Awoopsopa
Claim Number: FA0806001212860
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 <statefarmcarinsurance.info>, registered with Dotster.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2008.
On June 27, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <statefarmcarinsurance.info> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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@statefarmcarinsurance.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <statefarmcarinsurance.info> 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.info> domain name.
3. Respondent registered and used the <statefarmcarinsurance.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been in operation since 1930 providing a variety of insurance products and services. It has likewise spent significant money and time developing its mark and has been advertising its services through the <statefarm.com> domain name since 1995. Additionally, Complainant has registered the STATE FARM INSURANCE mark with numerous jurisdictions, including with the United States Patent and Trademark Office (“USPTO”) for its business and services relating to auto, home, life and fire insurance (Reg. No. 1,125,010 issued Sept. 11, 1979).
The <statefarmcarinsurance.info> domain name was registered on January 5, 2008. The disputed domain name resolves to a website featuring a nonsensical article and a variety of links to third-party insurance services, many of whom operate in direct competition with Complainant.
In a prior UDRP proceeding, Respondent has been the subject of numerous UDRP decisions in which Respondent was found to have registered a disputed domain name in bad faith. See State Farm Mut. Auto. Ins. Co. v. Gfmis, FA 1163668 (Nat. Arb. Forum April 29, 2008).
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 INSURANCE mark under
Policy ¶ 4(a)(i) through its numerous registrations worldwide, including with
the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat.
Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark
through registration of the mark with several trademark authorities throughout
the world, including the United States Patent and Trademark office (‘USPTO’)…
.”); see also Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction).
The <statefarmcarinsurance.info> domain name contains Complainant’s STATE FARM INSURANCE mark, but inserts the descriptive word “car” before the word “INSURANCE.” The word “car” directly corresponds to the automobile insurance that Complainant provides under the STATE FARM INSURANCE mark. Many previous panels have established that the inclusion of such a descriptive word does not distinguish a disputed domain name. See 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Furthermore, the disputed domain name contains the top-level domain “.info,” but this is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). For both of these reasons, the Panel finds that Complainant’s <statefarmcarinsurance.info> domain name is confusingly similar to STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(i).
At the start of a Policy ¶ 4(a)(ii) analysis, a panel must
determine whether or not the complainant has demonstrated a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name. See 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)”). The
Panel finds that Complainant has established a prima facie case against Respondent and that the burden is
accordingly shifted to Respondent to show that it does have rights or
legitimate interests in the disputed domain name. See F. Hoffmann-La Roche AG v. Di Salvatore,
D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of
paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts
from the Complainant to the Respondent once the Complainant has made out a
prima facie case that the Respondent has no rights or interests in the domain
names.”).
Respondent has failed to reply to Complainant’s
Complaint. Therefore, the Panel may
presume that Respondent lacks rights and legitimate interests in the disputed
domain name, but will nonetheless examine the record in consideration of the
elements listed under Policy ¶ 4(c). See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a
substantive answer in a timely fashion, the Panel accepts as true all of the
allegations of the complaint.”); 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.”).
Complainant argues that Respondent has no relation to
Complainant and lacks a license or permission to use Complainant mark in any
way. Moreover, there is nothing in the
record that indicates that Respondent is or ever was commonly known by the
disputed domain name. Consequently, the
Panel finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)
(finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see also
The
<statefarmcarinsurance.info> domain name resolves to an
article composed entirely of random words and a series of links to third-parties,
most all of whom offer insurance products and services that compete with those
offered under Complainant’s mark. The
Panel finds that this does not constitute 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 Meyerson v. Speedy Web, FA
960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has
failed to offer any goods or services on its website other than links to a
variety of third-party websites, it was not using a domain name in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(ii).
Respondent has already been ordered to transfer prior
infringing domain names it had owned to the respective complainants in prior
UDRP cases. See State Farm Mut. Auto. Ins. Co. v. Gfmis, FA 1163668 (Nat. Arb.
Forum April 29, 2008). This prior
precedent establishes a presumption for the Panel that Respondent has also
registered and is using the disputed domain name in this case in bad
faith. Absent any response from
Respondent, the Panel finds that Respondent has registered and is using the <statefarmcarinsurance.info> domain
name in bad faith pursuant to Policy ¶ 4(b)(ii). See Arai
Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the
disputed domain name, <aria.com>, to prevent Complainant from registering
it” and taking notice of another Policy proceeding against the respondent to
find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v.
Respondent’s use of the <statefarmcarinsurance.info> domain
name to resolve to a website displaying an illegible article and a variety of
links to competing insurance providers.
The Panel assumes that this competitive use is for the purpose of
disrupting Complainant’s business.
Therefore, the Panel finds this to be additional evidence establishing
Respondent’s bad faith registration and use of the disputed domain name under
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
Additionally,
the Panel may presume that Respondent is financially benfiting from its use of
the <statefarmcarinsurance.info> domain name by
accumulating “click-through” fees or other similar referral fees of Internet
users seeking information on Complainant who click on one of Respondent’s links
and are redirected to Complainant’s competitors. The Panel finds this to be further evidence
of Respondent’s bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(b)(iv). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); 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.’”); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has satisfied 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 <statefarmcarinsurance.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 7, 2008
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