State Farm Mutual Automobile Insurance Company v. Techkraft
Claim Number: FA0906001271029
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 <statefarmjacksonville.com>, <statefarmhomestead.com>, <statefarmhollywood.com>, <statefarmgainesville.com>, <statefarmfortmyers.com>, <statefarmfloridakeys.com>, <statefarmfortlauderdale.com>, <statefarmdaytona.com>, <statefarmverobeach.com>, <statefarmtalahassee.com>, <statefarmstlucie.com>, <statefarmsarasota.com>, <statefarmmiami.com>, <statefarmkissmmee.com>, <statefarmkeywest.com>, and <floridastatefarm.com>, registered with Godaddy.com, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On June 30, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmjacksonville.com>, <statefarmhomestead.com>, <statefarmhollywood.com>, <statefarmgainesville.com>, <statefarmfortmyers.com>, <statefarmfloridakeys.com>, <statefarmfortlauderdale.com>, <statefarmdaytona.com>, <statefarmverobeach.com>, <statefarmtalahassee.com>, <statefarmstlucie.com>, <statefarmsarasota.com>, <statefarmmiami.com>, <statefarmkissmmee.com>, <statefarmkeywest.com>, and <floridastatefarm.com> 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 July 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 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@statefarmjacksonville.com, postmaster@statefarmhomestead.com, postmaster@statefarmhollywood.com, postmaster@statefarmgainesville.com, postmaster@statefarmfortmyers.com, postmaster@statefarmfloridakeys.com, postmaster@statefarmfortlauderdale.com, postmaster@statefarmdaytona.com, postmaster@statefarmverobeach.com, postmaster@statefarmtalahassee.com, postmaster@statefarmstlucie.com, postmaster@statefarmsarasota.com, postmaster@statefarmmiami.com, postmaster@statefarmkissmmee.com, postmaster@statefarmkeywest.com, and postmaster@floridastatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmjacksonville.com>, <statefarmhomestead.com>, <statefarmhollywood.com>, <statefarmgainesville.com>, <statefarmfortmyers.com>, <statefarmfloridakeys.com>, <statefarmfortlauderdale.com>, <statefarmdaytona.com>, <statefarmverobeach.com>, <statefarmtalahassee.com>, <statefarmstlucie.com>, <statefarmsarasota.com>, <statefarmmiami.com>, <statefarmkissmmee.com>, <statefarmkeywest.com>, and <floridastatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmjacksonville.com>, <statefarmhomestead.com>, <statefarmhollywood.com>, <statefarmgainesville.com>, <statefarmfortmyers.com>, <statefarmfloridakeys.com>, <statefarmfortlauderdale.com>, <statefarmdaytona.com>, <statefarmverobeach.com>, <statefarmtalahassee.com>, <statefarmstlucie.com>, <statefarmsarasota.com>, <statefarmmiami.com>, <statefarmkissmmee.com>, <statefarmkeywest.com>, and <floridastatefarm.com> domain names.
3. Respondent registered and used the <statefarmjacksonville.com>, <statefarmhomestead.com>, <statefarmhollywood.com>, <statefarmgainesville.com>, <statefarmfortmyers.com>, <statefarmfloridakeys.com>, <statefarmfortlauderdale.com>, <statefarmdaytona.com>, <statefarmverobeach.com>, <statefarmtalahassee.com>, <statefarmstlucie.com>, <statefarmsarasota.com>, <statefarmmiami.com>, <statefarmkissmmee.com>, <statefarmkeywest.com>, and <floridastatefarm.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company,
has been doing business under the STATE
Respondent registered all sixteen of the disputed domain
names on
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 Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that all sixteen of Respondent’s
disputed domain names are confusingly similar to its STATE
Moreover, the Panel finds that generic top-level domains are
irrelevant under Policy ¶ 4(a)(i) because every domain
name must have one. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA
153545 (Nat. Arb. Forum
Therefore, the Panel finds that Respondent’s disputed domain
names are confusingly similar to Complainant’s STATE
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests in the disputed
domain names. For the purposes of a Policy ¶ 4(a)(ii)
analysis, Complainant must meet its burden of production for its prima facie
case, and then the burden shifts to Respondent. Respondent must bring
itself within the purview of Policy ¶ 4(c), or put forward some other reason
why it can fairly be said to have relevant rights or legitimate interests in
relation to the disputed domain names. Complainant has presented a prima
facie case; however, Respondent has failed to submit a response. Nevertheless, the Panel will review the
record to determine whether Respondent has any rights or legitimate interests
in the disputed domain names under 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.”); see
also American Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb.
Forum
Each of the sixteen disputed domain names resolve to a website featuring click-through links that further resolve to the websites of Complainant’s competitors in the insurance industry. The Panel presumes that Respondent is profiting through the receipt of click-through fees and finds that Respondent has failed to use the disputed domain names in connection with 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 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Moreover, Complainant contends that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies the registrant as “Techkraft.” This information suggests that Respondent is not commonly known by the disputed domain names and there is no evidence in the record to suggest otherwise. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration of sixteen infringing domain names prevents Complainant from reflecting its STATE FARM mark on the Internet. Respondent registered the sixteen disputed domain names in one day and Complainant contends that such conduct is evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). The Panel agrees and finds that Respondent’s conduct establishes a pattern that constitutes bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering
trademark-related domain names in bad faith.”).
Complainant contends that Respondent is using the confusingly similar disputed domain names to attract Internet users to websites containing click-through links that further resolve to the websites of Complainant’s competitors. The Panel finds that Respondent has misappropriated Complainant’s STATE FARM mark to divert Internet users to competing websites, which likely disrupts Complainant’s business. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain names under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The
websites resolving from the confusingly similar disputed domain names each contain
sponsored click-through links which presumably generate revenue for
Respondent. The Panel therefore finds that Respondent’s intent to attract
unknowing Internet users to competing websites, and capitalize on Complainant’s
mark, demonstrates bad faith registration and use under 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.
Complainant has satisfied 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 <statefarmjacksonville.com>, <statefarmhomestead.com>, <statefarmhollywood.com>,
<statefarmgainesville.com>, <statefarmfortmyers.com>,
<statefarmfloridakeys.com>, <statefarmfortlauderdale.com>,
<statefarmdaytona.com>, <statefarmverobeach.com>, <statefarmtalahassee.com>,
<statefarmstlucie.com>, <statefarmsarasota.com>, <statefarmmiami.com>,
<statefarmkissmmee.com>, <statefarmkeywest.com>, and <floridastatefarm.com>
domain names be TRANSFERRED from Respondent to Complainant.
Dated: August 11, 2009
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