State Farm Mutual Automobile Insurance Company v. Jason Asher
Claim Number: FA0808001222436
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 <statefarmpowersports.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2008.
On August 28, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmpowersports.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 September 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 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@statefarmpowersports.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 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 <statefarmpowersports.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmpowersports.com> domain name.
3. Respondent registered and used the <statefarmpowersports.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a national company that has operated since 1930. Complainant has operated under the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <statefarm.com> domain name in connection with its operations.
Respondent registered the <statefarmpowersports.com> domain name on March 26, 2008. The disputed domain name resolves to a web page indicating that it is parked free courtesy of GoDaddy.com, and contains numerous links for 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 set forth evidence indicating that it registered the STATE FARM mark with the USPTO. The Panel finds that Complainant’s registration of the mark with the USPTO is sufficient to grant standing under the UDRP and Policy ¶ 4(a)(i), as such registration signifies Complainant’s rights in the mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <statefarmpowersports.com> domain name contains Complainant’s entire STATE FARM mark and adds the generic terms “power” and “sports,” as well as the generic top-level domain “.com.” Because the mark is the most unique and dominant feature, the Panel finds that the changes offer no substantial distinction, and that therefore the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to the complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Because this assertion constitutes a sufficient prima facie case supporting its allegations, Respondent receives the burden of demonstrating its rights or legitimate interests under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s disputed domain name resolves to a website that features third-party advertisements for businesses that compete with Complainant’s services. Respondent presumably benefits from this activity through the receipt of referral fees. Previous panels have consistently held, as this Panel so holds, that such a use cannot constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
There is no evidence within the record for the Panel to
conclude that Respondent is or ever was known by the disputed domain name. Even the registrant of record in the WHOIS
information is listed as “Jason Asher,”
which bears no similarity to the disputed domain name. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain name under 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In this case, Respondent’s disputed domain name was
registered with Complainant’s entire STATE FARM mark as the predominant
feature, and as such this Panel has already concluded that the disputed domain
name is confusingly similar to the mark.
However, Respondent’s use of this disputed domain name involved a
corresponding web page that provided parked advertisements for Complainant’s
competitors. Internet users seeking
Complainant would be diverted to this website and be confronted with links for
businesses that compete with Complainant.
The Panel therefore finds that Respondent has engaged in bad faith
registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
This Panel has found
that the disputed domain
name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i), for the reasons listed in that section. Internet users seeking Complainant’s products
or services would likely attempt to locate Complainant on the Internet. Such Internet users would, by Respondent’s
design, be routed away from Complainant and to
Respondent’s corresponding website. To
then be confronted with third-party advertisements, some of which compete with
Complainant, would be both confusing and potentially frustrating. Respondent has therefore created a
substantial possibility of a likelihood of confusion as to Complainant’s
source, endorsement, affiliation, and sponsorship of the disputed domain name
and corresponding website. The Panel
thus finds that Respondent has engaged in bad faith registration and use under
Policy ¶ 4(b)(iv).
See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be mislead to Respondent’s website at the
<century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); 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 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 <statefarmpowersports.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 10, 2008
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