State Farm Mutual Automobile Insurance Company v. JYS Trucking c/o Jacob Shai
Claim Number: FA0810001227412
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurane
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmvanlines.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2008.
On October 2, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmvanlines.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 October 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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@statefarmvanlines.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 28, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant began using the STATE FARM service mark in 1930.
The mark was registered with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585) for underwriting and servicing of homeowners, auto, life and fire insurance.
Complainant has provided to Respondent no license or permission to use its STATE FARM service mark in any way.
The disputed <statefarmvanlines.com> domain name was registered by Respondent on April 8, 2008.
This domain name initially redirected Internet users to <hellomoving.net> and advertised the “State Farm Vanlines” relocation service.
After Complainant sent Respondent a cease-and-desist letter, the disputed domain name’s properties were changed so that it now resolves to a parked web page containing links to various insurance products and services that compete with the business of Complainant.
Respondent’s <statefarmvanlines.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the domain name <statefarmvanlines.com>.
Respondent registered and uses the <statefarmvanlines.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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.
Complainant has sufficiently established rights in the STATE
FARM service mark, pursuant to Policy ¶ 4(a)(i), by
means of its registration with the United States Patent and Trademark Office
(“USPTO”).
The <statefarmvanlines.com> domain name contains Complainant’s STATE FARM mark in its entirety followed by the generic terms “van” and “lines” and the generic top level domain (“gTLD”) “.com.” It is well-established that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Moreover, that addition of common generic terms to a mark will not prevent a finding of confusing similarity. See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that the domain name <statefarmdirect.com> is confusingly similar to a complainant’s registered mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contains the identical mark of a complainant combined with a generic word or term); further see Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to a complainant’s DISNEY mark because it incorporated that complainant’s entire famous mark and merely added two terms to it).
For these reasons, the Panel finds that the <statefarmvanlines.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), we must first determine whether Complainant has established a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name. We are satisfied that Complainant has met this threshold burden. Accordingly the burden is shifted to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interest in the subject domain names.
No response has been received in this case. Therefore, we may presume that Respondent
lacks rights to and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
However, in order to substantiate this presumption, we will
examine the record in light of the considerations listed under Policy ¶
4(c).
In this connection, we first observe that Complainant
contends, and Respondent does not deny, that Complainant has provided to
Respondent no license or permission to use its STATE FARM service mark in any
way. Additionally, the pertinent WHOIS
information lists Respondent merely as “JYS Trucking c/o Jacob Shai.” In the absence of any other evidence in the
record, we must therefore conclude that Respondent is not commonly known by the
<statefarmvanlines.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” is a factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that a respondent was not commonly known by the domain name <lilpunk.com>
where there was no evidence in the record showing that that respondent was
commonly known by the domain name, taken together with the pertinent WHOIS
information and a complainant’s uncontroverted assertion that it did not
authorize or license a respondent’s use of its mark in a domain name).
We also note that there is no dispute as to Complainant’s allegation to the effect that the <statefarmvanlines.com> domain name originally resolved to a website providing unauthorized relocation services under Complainant’s STATE FARM mark, and that, after Complainant sent Respondent a cease-and-desist letter, the disputed domain name’s properties were changed so that it currently resolves to a parked website that lists information and services related to insurance products that directly compete with the business of Complainant. We conclude from these facts that neither Respondent’s unauthorized use of the STATE FARM mark to market and offer its own products and services, nor the more recent display of links to third-party competitors of Complainant, constitutes 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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000):
The
unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona
fide offering of goods or services.
See also Constellation
Wines U.S., Inc. v.
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name currently resolves to a series of
links that redirect Internet users to third-party web sites offering insurance
products and services that compete with those offered under Complainant’s STATE
FARM mark. This competitive use of the
domain name demonstrates Respondent’s intent to disrupt Complainant’s
business. Consequently, we conclude that
Respondent has registered and is using the domain name <statefarmvanlines.com>
in bad faith pursuant to 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 domain confusingly similar to a
competing mark 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 of the domain under Policy ¶ 4(b)(iii)); see also St.
Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007): “This Panel concludes that by
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶
4(b)(iii).”
Additionally, we must take note of Complainant’s undenied
assertion to the effect that the disputed <statefarmvanlines.com>
domain name originally resolved to a website that offered unauthorized
relocation services under the STATE FARM mark, and that this was done without
Complainant’s consent or permission. It
may be presumed that Respondent benefited financially from this commercial use
through the receipt of “click-through” fees. Furthermore, we presume that Respondent’s
current use of the disputed domain name provides financial compensation to
Respondent through similar referral fees, because most of the links displayed
redirect Internet users to direct competitors of Complainant. This being so, we find these circumstances to
be additional evidence of Respondent’s bad faith registration and use of the <statefarmvanlines.com>
domain name pursuant to Policy ¶ 4(b)(iv).
See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464
(Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent
registered the domain name <statefarmnews.com> in bad faith under Policy
¶ 4(b)(iv) because that respondent intended to use a complainant’s marks to
attract the public to a resolving web site without permission from that
complainant); see also Toyota Motor Sales U.S.A. Inc.
v. Clelland, FA 198018 (Nat. Arb. Forum
Nov. 10, 2003): “Respondent used <land-cruiser.com> to advertise its
business, which sold goods in competition with Complainant. This establishes
bad faith as defined in Policy ¶ 4(b)(iv).” Further see
T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that
the registration and use of a domain name confusingly similar to a
complainant’s mark to direct Internet traffic to a commercial “links page” in
order to profit from click-through fees or other revenue sources constitutes
bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarmvanlines.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 6, 2008
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