State Farm Mutual Automobile Insurance Company v. Sung Keng Kim
Claim Number: FA0906001268217
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 <statefarminsuarance.com>, registered with Domainsatcost.ca.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2009.
On June 16, 2009, Domainsatcost.ca confirmed by e-mail to the National Arbitration Forum that the <statefarminsuarance.com> domain name is registered with Domainsatcost.ca and that Respondent is the current registrant of the name. Domainsatcost.ca has verified that Respondent is bound by the Domainsatcost.ca 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 June 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 2009 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@statefarminsuarance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <statefarminsuarance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <statefarminsuarance.com> domain name.
3. Respondent registered and used the <statefarminsuarance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, has been doing business in both the insurance and financial service industries since 1930. Complainant registered the STATE FARM INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) on September 11, 1979 (Reg. No. 1,125,010). Complainant developed its Internet presence in 1995 when it began using the domain name <statefarm.com>.
Respondent registered the <statefarminsuarance.com> domain name on November 14, 2008. The disputed domain name is currently being used to resolve to a website featuring click-through links that further resolve to websites of Complainant’s competitors in the insurance industry. Following the receipt of Complainant’s cease and desist letter, Respondent offered to sell the disputed domain name to Complainant for $175.00.
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 concludes that Complainant’s registration of the STATE FARM INSURANCE mark with the USPTO is sufficient to satisfy Policy ¶ 4(a)(i). The Policy does not require Complainant to have registered the STATE FARM INSURANCE mark in the country of Respondent’s residence. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <statefarminsuarance.com> domain name is confusingly similar to its STATE FARM INSURANCE mark under Policy ¶ 4(a)(i). The disputed domain name contains the distinctive portion of Complainant’s STATE FARM INSURANCE mark with the removal of spaces between the words, the addition of the letter “a” to the term “insurance,” and the affixation of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the mere addition of the letter “a” within the term “insurance” renders Respondent’s <statefarminsuarance.com> domain name confusingly similar to Complainant’s STATE FARM INSURANCE mark. Additionally, the affixation of the gTLD “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <statefarminsuarance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <statefarminsuarance.com> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name, bringing itself within the purview of Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). In these proceedings Complainant has presented a sufficient prima facie case. However, Respondent has failed to respond to the allegations against it. From this failure, the Panel may infer that Respondent lacks any rights or legitimate interests in the <statefarminsuarance.com> domain name. Additionally, the Panel may presume that Complainant’s allegations are true. 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.”). However, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <statefarminsuarance.com> domain name. The WHOIS information lists the registrant as “Sung Keng Kim,” which bears no resemblance to the disputed domain name. This information, together with the lack of evidence in the record to the contrary, establishes the Panel’s conclusion that Respondent is not commonly known by the <statefarminsuarance.com> domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a website
featuring click-through links promoting competitors of Complainant. Respondent is likely profiting through the
generation of click-through fees. The Panel finds that such use, presumably for
financial gain, does not constitute a bona
fide offering of goods or services or a legitimate noncommercial or fair
use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005)
(finding that the respondent’s use of the <expediate.com> domain name to
redirect Internet users to a website featuring links to travel services that
competed with the complainant was not 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 also
Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did not
constitute 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)).
Complainant also alleges that Respondent’s willingness to sell the <statefarminsuarance.com> domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel agrees and finds that absent evidence to the contrary, Respondent’s attempt to sell the domain name for an amount in excess of its registration expenses, suggests it has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Moreover,
Complainant contends that Respondent has engaged in the practice of
typosquatting. Respondent is taking
advantage of Internet users attempting to reach Complainant but mistakenly
misspelling Complainant’s STATE FARM INSURANCE mark by adding an “a” to
the word “insurance.” The Panel finds
that Respondent’s engagement in the practice of typosquatting is evidence that
Respondent lacks rights or legitimate interests in the <statefarminsuarance.com>
domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in bad
faith registration and use of the <statefarminsuarance.com> domain
name pursuant to Policy ¶ 4(b)(i) based on Respondent’s offer to sell the
disputed domain name in excess of its out-of-pocket costs to Complainant. The Panel agrees and finds that Respondent’s
offer to sell the confusingly similar domain name to the trademark’s rightful
owner constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the
attempted sale of a domain name is evidence of bad faith); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Complainant alleges that Respondent is using a confusingly similar domain name to attract Internet users to a website containing advertisement links to websites of Complainant’s competitors. The Panel finds that appropriating a misspelled version of Complainant’s STATE FARM INSURANCE mark to divert Internet users to competing websites likely disrupts Complainant’s business. Therefore, Respondent has engaged in bad faith registration and use 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 confusingly similar domain name 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 under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant further contends that typosquatting is itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds that Respondent’s <statefarminsuarance.com> domain name is merely a typosquatted version of Complainant’s STATE FARM INSURANCE mark, and that such typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <statefarminsuarance.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon Panelist
Dated: July 20, 2009
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