State Farm Mutual Automobile Insurance Company v. TheRightTraffic c/o Candace Adams
Claim Number: FA0810001230814
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
NAMES
The domain names at issue are <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com>, registered with Wild West Domains, Inc.
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 23, 2008; the National Arbitration Forum received a hard copy of the Complaint October 24, 2008.
On October 24, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has 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 27, 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@beststatefarminsurance.com, postmaster@freestatefarminsurance.com and postmaster@thestatefarminsurance.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 25, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com> are confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent has no rights to or legitimate interests in the <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com> domain names.
3. Respondent registered and used the <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, began doing business under the STATE FARM INSURANCE mark in 1930. It registered the STATE FARM INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) for life, casualty, and fire insurance underwriting and business (Reg. No. 1,125,010 issued Sept. 11, 1979).
Respondent’s <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com> domain names were each registered June 13, 2008. They each resolve to a website that states that it is parked free, courtesy of DomainRightNow, and contains numerous links for various insurance products and companies, including those in direct competition with 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."
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.
Complainant’s registration of the STATE FARM INSURANCE mark
with the USPTO establishes Complainant’s rights in its mark pursuant to Policy
¶ 4(a)(i). See Reebok Int’l Ltd. v.
Each of the disputed domain names incorporates Complainant’s
STATE FARM INSURANCE mark in its entirety and the generic top level domain
(“gTLD”) “.com.” Moreover, the <beststatefarminsurance.com>, <freestatefarminsurance.com>
and <thestatefarminsurance.com> domain names precede
Complainant’s mark with either the generic word “best,” “free” or “the.” First,
the use of a gTLD is irrelevant to a Policy ¶ 4(a)(i)
analysis and second, the incorporation of a generic term does not sufficiently
distinguish a disputed domain name. Accordingly, the Panel finds that each of
the <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com>
domain names are confusingly similar to Complainant’s STATE FARM INSURANCE mark
pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that
the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is
irrelevant to a Policy ¶ 4(a)(i) analysis); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term); see also Am. Online, Inc.
v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing
similarity where “[t]he domain name includes Complainant’s mark with the
addition of the descriptive word “hot,” which does not dispel any confusion
arising from the inclusion of Complainant’s mark in the domain name.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Before the Panel may proceed under Policy ¶ 4(a)(ii), a determination must be made as to whether Complainant has met its burden of establishing a prima facie case against Respondent. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name). The Panel finds that Complainant met this threshold and that the burden accordingly shifts to Respondent to show that it has rights or legitimate interests in the disputed domain names. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).
However, no response has been filed in this case. This permits the Panel to infer that Respondent lacks rights and legitimate interests in the disputed domain names. Nevertheless, the Panel examines the record before making a determination that Respondent lacks such rights under the elements of Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant asserts that Respondent has no rights or permission
and is not otherwise authorized to use the STATE FARM INSURANCE mark in any way.
Additionally, the <beststatefarminsurance.com>, <freestatefarminsurance.com>
and <thestatefarminsurance.com> domain names each identify
Respondent in their WHOIS information as “TheRightTraffic c/o Candace Adams.” Without additional information in the record,
the Panel finds that Respondent is not commonly known by any of the disputed
domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also Educ. Broad. Corp.
v. DomainWorks Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by
the <thirteen.com> domain name based on all evidence in the record, and
the respondent did not counter this argument).
Each of the <beststatefarminsurance.com>, <freestatefarminsurance.com>
and <thestatefarminsurance.com> domain names resolves to a
parked website that contains a series of links to third-parties that offer
insurance products and services that compete with Complainant. The Panel finds
that neither the parked status nor the listing of competitive links constitute
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 Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb.
Forum Nov. 14, 2006) (“[T]he operation of a ‘parking page’ in connection with
the disputed domain name does not constitute a bona fide
offering of goods or services as contemplated by [UDRP] Policy ¶ 4(c)[i] or a legitimate noncommercial or fair use as
contemplated by [UDRP] Policy ¶ 4(c)[iii].”); see also Tesco Pers. Fin. Ltd.
v. Domain Mgmt. Servs., FA
877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not
using the <tesco-finance.com> domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by maintaining a web page with misleading links to the complainant’s
competitors in the financial services industry).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Moreover, after examining the listing of third-party links
to direct competitors of Complainant contained on the disputed websites that
resolves from the disputed domain names, the Panel finds that Respondent has
registered and is using the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iii), expressly for the purpose of
disrupting Complainant’s business. See
EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
And finally, the disputed
domain names are in parked status. Whether or not Respondent exercises direct
control over these domain names and their current use is irrelevant to these
proceedings. The Panel holds Respondent
responsible for whatever use is made of the domain names. It may be assumed
that these parked websites generate revenue through “click-through” fees and
advertisements for either the parking service or DomainRightNow. However, who actually receives these fees
also is not relevant. The fact that either Respondent or its parking service is
commercially benefiting from the use of the disputed domain names constitutes
further evidence of Respondent’s bad faith registration and use of the disputed
domain names pursuant to Policy ¶ 4(b)(iv). See
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb.
Forum June 8, 2007) (finding bad faith registration and use pursuant to
Policy ¶ 4(b)(iv), regardless of the fact that the respondent was not earning
click-through fees, because “[a]lthough the websites accessed via the Disputed
Domains may be operated by domain parking service providers, that activity is
legally and practically attributable back to Respondent … [t]he key fact here
is that Respondent, in collaboration with the domain parking service providers,
is exploiting Complainant's goodwill.”); see also
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 <beststatefarminsurance.com>, <freestatefarminsurance.com> and <thestatefarminsurance.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2008.
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