State Farm Mutual Automobile Insurance Company v. Jeremiah Neese
Claim Number: FA0907001273585
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmmedical.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 5, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <statefarmmedical.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmmedical.com> domain name.
3. Respondent registered and used the <statefarmmedical.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 nationally known company that has
conducted business under the STATE FARM mark since 1930 in the insurance and
financial services industries.
Complainant holds numerous registrations of its STATE FARM mark with
several governmental trademark authorities throughout the world, including the
United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,979,585
Respondent registered the <statefarmmedical.com>
domain name 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 is satisfied with Complainant’s showing of rights
in the STATE
domain name contains Complainant’s entire mark while deleting the space within
the mark and merely adds the generic term “medical” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that none of these alterations to Complainant’s mark sufficiently distinguishes
the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <statefarmmedical.com> domain name is
confusingly similar to Complainant’s STATE FARM mark under Policy ¶
4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity [sic] or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop.
Assocs., FA 937650 (Nat.
Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms
and the addition of a gTLD do not establish distinctiveness from the
complainant’s mark under Policy ¶ 4(a)(i);
see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a
prima facie showing that Respondent
lacks rights and legitimate interests in the disputed domain name. Upon
satisfaction of such a showing, the burden then shifts to Respondent and
Respondent must establish that it has rights or legitimate interests in the
disputed domain name. The Panel finds
that Complainant has sufficiently made its prima
facie showing under Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
Respondent is listed in the WHOIS information as “Jeremiah Neese,” which does not indicate that
Respondent is commonly known by the <statefarmmedical.com>
domain name. Respondent has not offered any evidence to
indicate that Policy ¶ 4(c)(ii) applies to Respondent. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron
Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was
not commonly known by the <shoredurometer.com> and <shoredurometers.com>
domain names because the WHOIS information listed Andrew Kaner c/o Electromatic
a/k/a Electromatic Equip't as the registrant of the disputed domain names and
there was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute); see
also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum
Moreover, Respondent’s <statefarmmedical.com> domain name resolves to a website that displays several hyperlinks to various third-party websites, some of which directly compete with Complainant. The Panel infers from the record that Respondent receives click-through fees for displaying these hyperlinks. Therefore, the Panel finds that Respondent’s use of the confusingly similar disputed domain name diverts Internet users to competing websites for commercial gain. Thus, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent using the <statefarmmedical.com>
domain name in conjunction with
hyperlinks displayed on the resolving website to redirect Internet users to
Complainant’s competitors’ websites. The
Panel finds that Respondent’s use in this case disrupts Complainant’s
business. The Panel further finds that
such a disruption constitutes bad faith registration and use 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
Furthermore, the Panel finds that Respondent’s use of the <statefarmmedical.com> domain name
and the aforementioned hyperlinks to presumably collect pay-per-click fees
constitutes bad faith registration and use under Policy ¶ 4(b)(iv) because
Respondent is commercially gaining from the goodwill surrounding Complainant’s
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 <statefarmmedical.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 24, 2009
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