State Farm Mutual Automobile Insurance Company v. Accord Insurance & Financial Services Group c/o Admin PrivateRegContact
Claim Number: FA0810001230469
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 <carinsurance-statefarm.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 22, 2008; the National Arbitration Forum received a hard copy of the Complaint October 22, 2008.
On October 23, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <carinsurance-statefarm.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@carinsurance-statefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <carinsurance-statefarm.com>, is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate interests in the <carinsurance-statefarm.com> domain name.
3. Respondent registered and used the <carinsurance-statefarm.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 the financial services industries. Complainant markets its products and services under the STATE FARM mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585). Complainant has used the STATE FARM mark continuously in commerce since at least as early as 1930.
Respondent registered the <carinsurance-statefarm.com>
domain name
April 17, 2008. The disputed domain name
resolves to a website that appears to be an index directory for a company by
the name of “BizInc
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the STATE
FARM mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that
Respondent’s <carinsurance-statefarm.com>
domain name is confusingly similar to its STATE
FARM mark. The
<carinsurance-statefarm.com> domain name differs from Complainant’s mark in four ways:
(1) the descriptive phrase “car insurance” has been added to the beginning of
the mark; (2) a hyphen has been added to the mark; (3) the space between the
words has been removed from the mark; and (4) the generic top-level domain
(“gTLD”) “.com” has been added. Neither
the addition of a descriptive phrase, the addition of a hyphen, nor the removal
of spaces sufficiently distinguishes a domain name from an incorporated mark
for the purposes of Policy ¶ 4(a)(i). See
Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153
(WIPO Oct. 17, 2000) (finding that the domain name
<bramblesequipment.com> is confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies that there is an association with the complainant’s business); see also Chernow Commc’ns, Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence
of punctuation marks, such as hyphens, does not alter the fact that a name is
identical to a mark"); see also Vivendi
Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding the domain
name <vivendiuniversalsucks.com> was confusingly similar to the
complainant's VIVENDI UNIVERSAL mark, because non-English speakers would
associate the domain name with the owner of the trademark). The addition of a
gTLD also does not reduce the likelihood of confusion between the domain name
and the mark because every domain name must contain a top-level domain. See Nev. State Bank v. Modern
Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the
Policy.”). Despite these changes,
Internet visitors are nevertheless still likely to confuse the disputed domain
name with Complainant’s mark, and so the Panel finds that Respondent’s disputed
domain name is not sufficiently distinguished from Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <carinsurance-statefarm.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 bringing evidence that shows that it does have rights to or legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known
by the <carinsurance-statefarm.com> domain
name and that Respondent has never owned or held a licensee to use the STATE
FARM mark. The WHOIS record for the
disputed domain name lists Respondent as “Accord
Insurance & Financial Services Group c/o Admin PrivateRegContact.” As Respondent has also failed to show any
evidence contrary to Complainant’s contentions that Respondent has not been
identified by any variant on the STATE FARM mark, the Panel finds that Respondent
is not commonly known by the <carinsurance-statefarm.com> domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where the respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name); see also Brown v. Sarrault,
FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by
the <mobilitytrans.com> domain name because
it was doing business as “Mobility Connections”).
Respondent maintains a website at the <carinsurance-statefarm.com> domain name that appears to be an index directory for a company by the name of BizInc USA, and features links to third-party websites unrelated to Complainant’s business. The Panel finds that Respondent’s use of the disputed domain names to divert Internet users to Respondent’s website and to other third-party websites 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 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).”); Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that, because Respondent intentionally used Complainant’s STATE FARM mark in the disputed domain name, it is likely that Respondent intended to confuse Internet customers seeking Complainant due to the similarity between the STATE FARM mark and the <carinsurance-statefarm.com> domain name. Respondent intentionally diverts those seeking Complainant to Respondent’s website that resolves from the disputed domain name. Complainant also contends that Respondent enjoys commercial gain through this diversion, by click-through fees that Respondent receives from third-party websites. Because Respondent has intentionally used the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of the disputed domain name is evidence of registration and use in bad faith. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); 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 finds that Complainant satisfied the elements of ICANN 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 <carinsurance-statefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2008.
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