State Farm Mutual Automobile Insurance Company v. David Bigarel
Claim Number: FA0809001226163
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 <all-state-farm.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum electronically on
On
On October
1, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of October
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@all-state-farm.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <all-state-farm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <all-state-farm.com> domain name.
3. Respondent registered and used the <all-state-farm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant engages in business in both the insurance and
financial services industries.
Complainant markets its services under the STATE FARM mark, which
Complainant registered with the United States Patent and Trademark Office
(“USPTO”) on
Respondent registered the <all-state-farm.com>
domain name on
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 has established rights in
the STATE FARM mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. 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 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.”).
Complainant contends that
Respondent’s <all-state-farm.com>
domain name is confusingly similar to its STATE
FARM mark. The
<all-state-farm.com> domain name differs from Complainant’s mark in four ways:
(1) the generic term “all” has been added to the beginning of the mark; (2) the
space between “STATE” and “FARM” has been removed; (3) hyphens have been added
between the terms in the domain name; and (4) the generic top-level domain
(“gTLD”) “.com” has been added to the end of the mark. Under Policy ¶ 4(a)(i), adding
generic terms does not distinguish a domain name from a mark, nor does removing
spaces or adding hyphens. See Am. Online Inc. v.
Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition
of the generic word “Net” to the complainant’s ICQ mark, makes the
<neticq.com> domain name confusingly similar to the complainant’s mark); see also Down E. Enter. Inc. v.
Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the
domain name <downeastmagazine.com> confusingly similar to the
complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Columbia Sportswear Co. v. Keeler,
D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue
is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR
COMPANY”). Furthermore,
the addition of a gTLD does nothing to distinguish a domain name from a mark,
because all domain names must include a TLD.
See Isleworth Land
Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <all-state-farm.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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); see also 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 contends that Respondent is not commonly known
by the <all-state-farm.com> domain name nor
has it ever been the owner or licensee of the STATE FARM mark. The WHOIS record for the disputed domain name
lists Respondent as “David Bigarel.” Because Respondent has failed to show any
evidence contrary to Complainant’s contentions and is not known by any variant
on the STATE FARM mark, the Panel finds that Respondent is not commonly known
by the <all-state-farm.com> domain name pursuant
to Policy ¶ 4(c)(ii). See
Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The disputed domain name currently resolves to a webpage that reads, “This domain is for sale.” Respondent also has inquired whether Complainant has made an offer to buy the domain name. In both instances, Respondent has demonstrated a willingness to dispose of its rights in the disputed domain name, which is enough evidence for the Panel to find that Respondent lacks any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Respondent previously used
the <all-state-farm.com> domain name to host a website that featured
links to third-party websites offering
insurance services that compete with Complainant’s business.
Complainant contends that Respondent commercially benefits from these
links through the receipt of “click-through” fees. The Panel finds that this use by Respondent of
the <all-state-farm.com> domain name was neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with the
complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As stated above, Respondent has made it clear that it is
willing to dispose of its rights in the disputed domain name through a sale,
either to Complainant or to anyone who learns of Respondent’s offer to sell the
<all-state-farm.com> domain
name. Both a suggestion that a mark
holder may want to buy a domain name, and a general offer to sell are evidence
of registration and use in bad faith under Policy ¶ 4(b)(i). See
S. Co. v. Doms, D2000-0184 (WIPO May
8, 2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating
to the complainant that he “would consider a cash offer” for the sale of the
disputed domain name registration while inviting the complainant to “submit an
opening cash or stock offer”); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum
Complainant contends that Respondent was previously using
the disputed domain name to divert Internet customers from Complainant’s
website to Respondent’s websites that resolve from the disputed domain name,
through the confusion caused by the similarity of the STATE FARM mark and the <all-state-farm.com> domain
name. Complainant also contends that
Respondent intended to disrupt Complainant’s business by diverting confused
customers to third-party websites that offer entertainment services competing
with Complainant’s business. The Panel
finds that Respondent did disrupt Complainant’s business, and therefore did
register and use the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii). See
Disney Enters., Inc. v. Noel, FA 198805
(Nat. Arb. Forum
Complainant also contends that Respondent gained
commercially from this diversion, through the click-through fees that
Respondent received from the third-party websites. The Panel finds that Respondent intentionally
used the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this
use is also evidence of Respondent’s registration and use in bad faith. See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum
Jan. 8, 2003) (finding that the disputed domain name was registered and used in
bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration
and use of the infringing domain name to intentionally attempt to attract
Internet users to its fraudulent website by using the complainant’s famous
marks and likeness); 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 <all-state-farm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 10, 2008
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