national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Manuel Acevedo

Claim Number: FA0906001268993

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Monke, of State Farm Mutual Automobile Insurance Company, Illinois.  Respondent is Manuel Acevedo (“Respondent”), Puerto Rico.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <statefarmpr.info>, <statefarmpuertorico.info>, <statefarmpr.com>, <statefarmpuertorico.com>, <statefarminsurancepuertorico.com>, <statefarminsurancepr.com>, <statefarminsurancepr.info>, and <statefarminsurancepuertorico.info>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2009.

 

On Jun 19, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmpr.info>, <statefarmpuertorico.info>, <statefarmpr.com>, <statefarmpuertorico.com>, <statefarminsurancepuertorico.com>, <statefarminsurancepr.com>, <statefarminsurancepr.info>, and <statefarminsurancepuertorico.info> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 15, 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@statefarmpr.info,  postmaster@statefarmpuertorico.info,  postmaster@statefarmpr.com,  postmaster@statefarmpuertorico.com,  postmaster@statefarminsurancepuertorico.com,  postmaster@statefarminsurancepr.com,  postmaster@statefarminsurancepr.info,  and postmaster@statefarminsurancepuertorico.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <statefarmpr.info>, <statefarmpuertorico.info>, <statefarmpr.com>, <statefarmpuertorico.com>, <statefarminsurancepuertorico.com>, <statefarminsurancepr.com>, <statefarminsurancepr.info>, and <statefarminsurancepuertorico.info> domain names are confusingly similar to Complainant’s STATE FARM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <statefarmpr.info>, <statefarmpuertorico.info>, <statefarmpr.com>, <statefarmpuertorico.com>, <statefarminsurancepuertorico.com>, <statefarminsurancepr.com>, <statefarminsurancepr.info>, and <statefarminsurancepuertorico.info> domain name.

 

3.      Respondent registered and used the <statefarmpr.info>, <statefarmpuertorico.info>, <statefarmpr.com>, <statefarmpuertorico.com>, <statefarminsurancepuertorico.com>, <statefarminsurancepr.com>, <statefarminsurancepr.info>, and <statefarminsurancepuertorico.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant offers insurance and financial 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 been using the STATE FARM mark continuously in commerce since at least as early as 1930, and is now nationally recognized as a major supplier of insurance and financial services.

 

Respondent registered the disputed domain names on February 1, 2009.  The disputed domain names resolve to parking pages that contain numerous links for various insurance products and companies.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the STATE FARM mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant contends that Respondent’s disputed domain names are confusingly similar to its STATE FARM mark.  The disputed domain names differ from Complainant’s mark in three ways: (1) the space has been removed from the mark; (2) the geographic term “Puerto Rico” or its abbreviation “PR” have been added to the end of the mark; and (3) a generic top-level domain (“gTLD”), either “.com” or “.info,” has been added.  In addition, the <statefarminsurancepuertorico.com>, <statefarminsurancepr.com>, <statefarminsurancepr.info>, and <statefarminsurancepuertorico.info> domain names have had the descriptive term “insurance” added to the mark.  The Panel finds that neither the removal of a space nor the addition of a geographic term (or its abbreviation) sufficiently distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i).  See BPM Prods., Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place.  Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark.”); see also Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark).  The Panel also finds that the addition of a gTLD does not reduce the likelihood of confusion between a domain name and the mark because every domain name must contain a gTLD.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Additionally, the Panel finds that adding a term that describes the business of a holder of a mark does not sufficiently distinguish a domain name from that mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).  Because the likelihood that Internet visitors will confuse the disputed domain names with Complainant’s mark is not eliminated or diminished by these changes, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names.  Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain names.  The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”).

 

Complainant contends that Respondent is not commonly known by the disputed domain names nor has it ever been the owner or licensee of the STATE FARM mark.  The WHOIS records for the disputed domain names list Respondent as “Manuel Acevedo.”  Because Respondent is not identified as any variant on the STATE FARM mark and has failed to show any evidence contrary to Complainant’s contentions, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

The disputed domain names resolve to website that contain numerous links for various insurance products and companies.  The Panel considers this use to constitute neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is intentionally disrupting Complainant’s business by diverting confused customers to Respondent’s websites that resolve from the disputed domain names, which feature links to competitors of Complainant.  The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business, and is evidence of registration and use in bad faith 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 also contends that Respondent is financially benefitting from ad revenues remitted from the third-party businesses advertised on the websites that resolve from the disputed domain names.  The Panel finds that Respondent’s commercial gain from ad revenue is evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <statefarmpr.info>, <statefarmpuertorico.info>, <statefarmpr.com>, <statefarmpuertorico.com>, <statefarminsurancepuertorico.com>, <statefarminsurancepr.com>, <statefarminsurancepr.info>, and <statefarminsurancepuertorico.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  August 5, 2009

 

 

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