national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Transure Enterprise Ltd. c/o Host Master

Claim Number: FA0907001274192

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Monke, of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Transure Enterprise Ltd. c/o Host Master (“Respondent”), British Virgin Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mystatefarminsurance.com> and <statefarminscompanies.com>, registered with Above, 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 July 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2009.

 

On July 17, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <mystatefarminsurance.com> and <statefarminscompanies.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names.  Above, Inc. has verified that Respondent is bound by the Above, 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 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 11, 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@mystatefarminsurance.com and postmaster@statefarminscompanies.com by e-mail.

 

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

 

On August 17, 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 <mystatefarminsurance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.  Respondent’s <statefarminscompanies.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE COMPANIES mark.

 

2.      Respondent does not have any rights or legitimate interests in the <mystatefarminsurance.com> and <statefarminscompanies.com> domain names.

 

3.      Respondent registered and used the <mystatefarminsurance.com> and <statefarminscompanies.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company that has conducted business in the insurance and financial services industries since 1930.  Complainant holds registrations for the STATE FARM INSURANCE mark (Reg. No. 1,125,010 issued September 11, 1979) and the STATE FARM INSURANCE COMPANIES mark (Reg. No. 645,890 issued May 21, 1957) with the United States Patent and Trademark Office (“USPTO”).

 

Respondent registered the <mystatefarminsurance.com> domain name on March 29, 2009 and the <statefarminscompanies.com> domain name March 31, 2009.  The disputed domain names resolve to similar websites that display hyperlinks to various third-party websites, some of which directly compete with Complainant.  In a correspondence sent to Complainant, Respondent offered to transfer the disputed domain names to Complainant for $500 per disputed domain name.

 

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

 

Complainant holds registrations for the STATE FARM INSURANCE mark (Reg. No. 1,125,010 issued September 11, 1979) and the STATE FARM INSURANCE COMPANIES mark (Reg. No. 645,890 issued May 21, 1957) with the USPTO.  The Panel finds that Complainant has sufficiently established rights in each of these marks pursuant to Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Respondent’s <mystatefarminsurance.com> domain name contains Complainant’s STATE FARM INSURANCE mark, deletes the spaces within the mark, adds the generic term “my,” and adds the generic top-level (“gTLD”) “.com.”  The Panel finds that none of these alterations to Complainant’s mark sufficiently distinguishes the <mystatefarminsurance.com> domain name from Complainant’s STATE FARM INSURANCE mark.  Therefore, the Panel finds that Respondent’s <mystatefarminsurance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i).  See 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 NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The <statefarminscompanies.com> domain name contains a significant portion of Complainant’s STATE FARM INSURANCE COMPANIES mark.  The only differences between this disputed domain name and Complainant’s STATE FARM INSURANCE COMPANIES mark are that the disputed domain name abbreviates the “insurance” term in Complainant’s mark to “ins,” removes the spaces in the mark, and adds the gTLD “.com.”  The Panel finds Respondent’s  <statefarminscompanies.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE COMPANIES mark under Policy ¶ 4(a)(i).  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Bond, supra.

 

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

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names.  Once Complainant makes a sufficient prima facie showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names.  The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii).  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise).

 

Respondent is listed in the WHOIS information for the <mystatefarminsurance.com> and <statefarminscompanies.com> domain names as “Transure Enterprise Ltd. c/o Host Master,” which does not indicate that Respondent is commonly known by either of the disputed domain names.  Respondent has not offered any evidence to indicate otherwise.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent’s <mystatefarminsurance.com> and <statefarminscompanies.com> domain names resolve to similar websites, each of which displays hyperlinks to third-party websites.  Some of these hyperlinks redirect Internet users to websites that directly compete with Complainant.  The Panel presumes that Respondent receives click-through fees from these hyperlinks.  The Panel finds that Respondent’s use of the disputed domain names 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).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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 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).

 

Prior to the commencement of this proceeding, Respondent sent an e-mail to Complainant in which Respondent offered to transfer the disputed domain names to Complainant for $500 per disputed domain name.  The Panel finds that this offer to sell the disputed domain names for more than Respondent’s out-of-pocket costs of registering the disputed domain names is further evidence that Respondent lacks rights and legitimate interests in the <mystatefarminsurance.com> and <statefarminscompanies.com> domain names pursuant to 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).

 

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

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s offer to sell the disputed domains for $500 per domain name to Complainant, which is more than Respondent’s out-of-pocket costs of registering the disputed domain names, falls squarely within bad faith registration and use under Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

 

Respondent uses the <mystatefarminsurance.com> and <statefarminscompanies.com> domain names and hyperlinks displayed on the resolving websites to redirect Internet users to Complainant’s competitors’ websites.  The Panel finds that this use of the disputed domain names disrupts Complainant’s business.  Therefore, the Panel finds that Respondent’s use of the disputed domain names 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 also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).

 

Finally, the Panel finds that Respondent’s use of the disputed domain names and the aforementioned hyperlinks to presumably receive click-through fees is evidence that Respondent is commercially gaining from a likelihood of confusion between Complainant’s mark and the disputed domain names.  Thus, the Panel finds that Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

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

 

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 <mystatefarminsurance.com> and <statefarminscompanies.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  August 27, 2009

 

 

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