national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Commonwealth Insurance and Financial c/o Melvin Engelke

Claim Number: FA0907001274196

 

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 Commonwealth Insurance and Financial, c/o Melvin Engelke (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nolongerstatefarm.net> and <nolongerstatefarm.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically July 16, 2009; the National Arbitration Forum received a hard copy of the Complaint July 17, 2009.

 

On July 16, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has 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 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 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@nolongerstatefarm.net and postmaster@nolongerstatefarm.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 Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.      The disputed domain names that Respondent registered, <nolongerstatefarm.net> and <nolongerstatefarm.com>, are confusingly similar to Complainant’s STATE FARM mark.

 

2.      Respondent has no rights to or legitimate interests in the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names.

 

3.      Respondent registered and used the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, provides both insurance and financial services.  Complainant has operated under the STATE FARM mark since 1922.  Complainant holds multiple trademarks with the United States Patent and Trademark Office (“USPTO”) for its STATE FARM (i.e., Reg. No. 1,979,585 issued June 11, 1996).     

 

Respondent registered the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names January 27, 2009.  The disputed domain names resolve to websites featuring links to Complainant’s competitors in the insurance and financial services industries.

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant registered the STATE FARM mark multiple times with the USPTO (i.e., Reg. No. 1,979,585 issued June 11, 1996).  Previous panels have held that registration of a mark with the USPTO is sufficient to establish a complainant’s rights under Policy ¶ 4(a)(i).  Therefore, the Panel finds that Complainant established rights in the STATE FARM mark through its registrations of the mark 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 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).

 

Complainant alleges that Respondent’s <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM mark.  Both of the disputed domain names contain Complainant’s mark and add the generic terms “no” and “longer.”  The Panel finds that addition of these generic words fails to adequately distinguish the disputed domain names from Complainant’s STATE FARM mark.  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).  The <nolongerstatefarm.net> domain name also adds the generic top-level domain (“gTLD”) “.net,” and the <nolongerstatefarm.com> domain name adds the gTLD “.com.”  The Panel finds the addition of a gTLD fails to adequately distinguish the disputed domain names from Complainant’s mark.  See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); 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.”).  Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s STATE FARM mark.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names.  Past panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a prima facie case.  Due to the Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names.  However, the Panel examines the record to determine whether evidence shows that Respondent has 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent’s <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names both resolve to websites featuring links to Complainant’s competitors in the insurance and financial services industry.  Complainant alleges that Respondent profits from the receipt of click-through fees in connection with the links on the websites resolving from the disputed domain names.  The Panel finds that this use of confusingly similar disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use of the domain names 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Complainant asserts that Respondent is not authorized to use the STATE FARM mark and is not commonly known by the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names.  The WHOIS information lists Respondent as “Commonwealth Insurance and Financial c/o Melvin Engelke” and no evidence in the record shows that Respondent is commonly known by the disputed domain names.    Therefore, the Panel finds 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); see also 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.”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent uses the <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names to resolve to websites featuring links to Complainant’s competitors in the financial and insurance industries.  The Panel finds this use of the disputed domain names constitutes disruption of Complainant’s business, which supports findings of 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

In such circumstances, the Panel is permitted to presume that Respondent receives click-through fees from the links featured on the websites resolving from the confusingly similar <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names.  Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the resolving websites.  Therefore, the Panel finds that Respondent’s use of the disputed domain names constitutes 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 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).”).

 

The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <nolongerstatefarm.net> and <nolongerstatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: August 31, 2009.

 

 

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