State Farm Mutual Automobile Insurance Company v. Michael Garcia
Claim Number: FA0807001214410
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 <statefarmautoglassclaims.com>,
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2008.
On July 9, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoglassclaims.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 July
22, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 11, 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.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <statefarmautoglassclaims.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmautoglassclaims.com> domain name.
3. Respondent registered and used the <statefarmautoglassclaims.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, began in 1930 as a federally chartered bank, and operates in the insurance and financial services industries. Complainant has utilized the STATE FARM mark (Reg. No. 1,087,834 issued March 21, 1978) since 1930, and has registered the mark with the United States Patent and Trademark Office (“USPTO”), along with numerous other governmental trademark authorities worldwide. Complainant also owns and operates the <statefarm.com> domain name in connection with its business.
Respondent registered the <statefarmautoglassclaims.com> domain name on February 21, 2008, and is using the disputed domain name to resolve to a parked website that contains third-party links and advertisements for Complainant’s direct competitors.
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.
The Panel finds that Complainant’s registration of the STATE
FARM mark with the USPTO confers sufficient rights in the mark for Complainant
to achieve UDRP standing under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA
286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had
established rights in the GOOGLE mark through its holding of numerous trademark
registrations around the world); see also
Respondent’s <statefarmautoglassclaims.com>
domain name incorporates Complainant’s STATE FARM mark with the generic words
“auto,” “glass,” and “claims.” The words
all fairly describe Complainant’s business, as Complainant insures automobiles
and processes claims for customers.
Moreover, a common claim made under insurance policies involves broken
glass in a car. Therefore, the Panel
finds that these descriptive words do not distinguish the disputed domain name
from Complainant’s mark, and that therefore the <statefarmautoglassclaims.com> domain name is confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). 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 Dr. Ing. h.c. F. Porsche AG v.
Anderson, D2004-0312 (WIPO July 2, 2004) (finding the
<porschesales.com> domain name to be confusingly similar where the
respondent added the generic term “sales” to the complainant’s PORSCHE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because the Panel finds that Complainant has satisfied its burden of setting forth a prima facie case supporting its allegation that Respondent lacks rights and legitimate interests in the disputed domain name, Respondent receives the burden of showing that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a 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.”).
There is a considerable lack of evidence before the Panel that would suggest that Respondent is commonly known by the disputed domain name. Respondent is listed in the WHOIS information as “Michael Garcia,” and Complainant has not provided Respondent with any license or permission to use the disputed domain name in any fashion. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a website that
features third-party advertisements and links for Complainant’s direct
competitors. Respondent presumably
receives monetary benefit through the receipt of “click-through” fees, thus
making this endeavor a commercial exercise.
The Panel finds that Respondent has therefore not created 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). See Summit
Group, LLC v. LSO, Ltd., FA
758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of
the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to
respondent’s own website for commercial gain does not constitute either 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27,
2007) (holding that the operation of a pay-per-click website at a confusingly
similar domain name was not 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 finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that
promotes Complainant’s competitors, thus proving ample opportunity for the
disruption of Complainant’s business.
The Panel finds that Respondent has therefore registered and used the
disputed domain name in bad faith 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
Respondent has also created a likelihood of confusion as to
Complainant’s source and endorsement of the disputed domain name and
corresponding website by creating the confusingly similar disputed domain
name. Respondent has committed this
action for its own commercial benefit, given the prevalence of “click-through”
fees on the corresponding website. The
Panel finds that Respondent has therefore registered and used the disputed
domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007)
(finding that the respondent registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially
gaining from the likelihood of confusion between the complainant’s AIM mark and
the competing instant messaging products and services advertised on the
respondent’s website which resolved from the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 2, 2008
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