State Farm Mutual Automobile Insurance Company v. Daniel Perez
Claim Number: FA0812001236882
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 <agentedestatefarm.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2008.
On December 4, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <agentedestatefarm.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 has 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 December 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@agentedestatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 <agentedestatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <agentedestatefarm.com> domain name.
3. Respondent registered and used the <agentedestatefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a national company that has operated since 1930 in the insurance and financial services industry. Complainant has conducted business under the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996) and STATE FARM INSURANCE mark (Reg. No. 1,125,010 issued September 11, 1979), both of which were registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <statefarm.com> domain name in connection with its operations.
Respondent registered the <agentedestatefarm.com> domain name on August 12, 2008. The disputed domain name resolves to a website that lists links to various insurance products and companies that directly compete with Complainant. The resolving website also lists the phrase “This site is under construction.”
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’s trademark registration for the STATE FARM mark with the USPTO confers upon Complainant sufficient rights in the mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <agentedestatefarm.com> domain
name differs from Complainant’s STATE FARM mark in the following manners: (1)
the space in the mark is omitted; (2) the generic top-level domain “.com” has
been added; (3) the term “agent” and the letters “
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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 has alleged that Respondent is not commonly known by the disputed domain name, and that Respondent is not authorized or otherwise permitted to use Complainant’s marks in any fashion. Respondent has not provided any contrary evidence to these assertions. The Panel also takes note of the fact that the WHOIS information lists Respondent as “Daniel Perez.” Without more, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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.”); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a website that
displays links for Complainant’s direct competitors, as well as the sentence:
“This site is under construction.” The
Panel infers that Respondent obtains referral fees for the placement of such
advertisements, and similarly finds that the provision of the aforementioned
sentence fails to qualify as demonstrable preparations to use the disputed
domain name in some future legitimate endeavor.
As such, the Panel finds that Respondent has failed to make actual use
or demonstrable preparations to use the disputed domain name in connection with
a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii)). See Disney Enters., Inc. v. Kamble, FA
918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); see also Broadcom Corp. v. Wirth, FA
102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to display an “under construction” page did not
constitute a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s disputed domain name resolves to a
corresponding website that provides parked advertisements for Complainant’s
competitors. Internet users seeking
Complainant would be diverted to this website and be confronted with links for
businesses that compete with Complainant.
The Panel therefore finds that Respondent has engaged in bad faith
registration and use of the disputed domain name under Policy ¶ 4(b)(iii) through this disruption of Complainant’s
business. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000)
(defining “competitor” as “one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
As mentioned previously,
the confusingly similar disputed domain name resolves to a pay-per-click
website that promotes Complainant’s competitors. Respondent has therefore created a
substantial likelihood of confusion as to Complainant’s source, endorsement,
affiliation, and sponsorship of the disputed domain name and corresponding
website. The Panel thus finds that
Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb.
16, 2007) (“The Panel finds such use to constitute bad faith registration and
use pursuant to Policy ¶ 4(b)(iv), because
[r]espondent is taking advantage of the confusing similarity between the
<metropolitanlife.us> domain name and Complainant’s METLIFE mark in order
to profit from the goodwill associated with the mark.”); see also MySpace, Inc. v. Myspace
Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the
respondent registered and used the <myspacebot.com> domain name in bad
faith by diverting Internet users seeking the complainant’s website to its own
website for commercial gain because the respondent likely profited from this
diversion scheme).
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 <agentedestatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 16, 2009
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