State Farm Mutual Automobile Insurance Company v. Transure Enterprise Ltd. c/o Host Master
Claim Number: FA0810001230805
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsco.com>, registered with Above, 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 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2008.
On October 26, 2008, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarminsco.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 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 firstname.lastname@example.org 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 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 registered the STATE FARM service mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585) in connection with offering insurance products and services to the public.
Complainant also registered the <statefarm.com> domain name on May 24, 1995 in the same connection.
Respondent registered the <statefarminsco.com> domain name on June 18, 2008.
Respondent has no license or agreement with Complainant authorizing Respondent to use the STATE FARM mark.
Respondent uses the disputed domain name as a parking site to display a list of links to third-party websites, some of which are in competition with Complainant’s business.
Respondent’s <statefarminsco.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights to or legitimate interests in the domain name <statefarminsco.com>.
Respondent registered and uses the <statefarminsco.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 domain name has been registered and is being used 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’s registration of its STATE FARM service mark with the USPTO is sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Turning then to the
question of confusing similarity as between the mark and disputed domain name,
we conclude that Respondent’s <statefarminsco.com>
domain name is confusingly similar to Complainant’s STATE FARM mark because the
domain name incorporates the dominant features of Complainant’s mark and merely
adds the generic abbreviation “ins” for “insurance” (the business of
Complainant) and the common abbreviation “co” for “company” plus the generic
top-level domain “.com.” In the
circumstances here presented, adding one or several abbreviated generic terms
to a mark does not eliminate the confusing similarity of the disputed domain
name. Likewise, the addition of a
generic top-level domain to the mark is immaterial to analysis of confusing
similarity under Policy ¶ 4(a)(i). Therefore, the panel finds the <statefarminsco.com> domain name is
confusingly similar to Complainant’s STATE FARM mark.
[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is upon Complainant to prove that Respondent does not have any rights to or legitimate interests in the disputed domain name. Once Complainant has made out a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests, usually be reference to the standards set out in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a disputed domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has presented a prima facie case under this heading. Because Respondent has not responded to the allegations of the Complaint, we are free to conclude that Respondent has no rights or interests cognizable under the Policy with respect to the domain here in issue. We will nonetheless examine the record before us to determine whether there is any basis for concluding that Respondent has any such rights or legitimate interests as contemplated in Policy ¶ 4(c).
We begin by noting that there is no evidence in the record suggesting that Respondent is commonly known by the <statefarminsco.com> domain name. Indeed Complainant asserts, and Respondent does not deny, that Respondent has no license or agreement with Complainant authorizing Respondent to use the STATE FARM mark. Moreover, the pertinent WHOIS information identifies Respondent only as “Transure Enterprise Ltd. c/o Host Master.” Thus, Respondent has not established rights to or 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 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
We also observe that there is no dispute as to Complainant’s assertion to the effect that the contested <statefarminsco.com> domain name resolves to a website offering links to the websites of third-parties, some of which are business competitors of Complainant. We presume from the circumstances that Respondent receives “click-through” fees from such links. From all of this we conclude that Respondent’s use, for economic gain, of a domain name that is confusingly similar to Complainant’s STATE FARM mark to redirect Internet users interested in Complainant’s services to third-party websites that are both unrelated to and in competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See, for example, TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which resolved to the websites of that complainant’s business competitors, was not a bona fide offering of goods or services); see also 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).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <statefarminsco.com> domain name, which is confusingly similar to Complainant’s STATE FARM mark, to redirect Internet users to Respondent’s website that features links to third-party sites, some of which compete with Complainant’s business. Such use constitutes disruption qualifying as bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
Because we may presume that Respondent receives “click-through” fees for diverting Internet users to third-party websites as alleged, and because Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark, Internet users accessing Respondent’s disputed domain name may become confused as to the possibility of Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <statefarminsco.com> domain name also constitutes bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent was using a confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that contained links to third-party sites offering services similar to those of a complainant).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarminsco.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 1, 2008
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