State Farm Mutual Automobile Insurance Company v. The Scott Mishler Agency c/o Scott Mishler
Claim Number: FA0908001278451
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 <scottmishlerstatefarm.com> and <tucsonstatefarm.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2009.
On August 10, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <scottmishlerstatefarm.com> and <tucsonstatefarm.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 August 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 1, 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@scottmishlerstatefarm.com and postmaster@tucsonstatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <scottmishlerstatefarm.com> and <tucsonstatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <scottmishlerstatefarm.com> and <tucsonstatefarm.com> domain names.
3. Respondent registered and used the <scottmishlerstatefarm.com> and <tucsonstatefarm.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 operating under the STATE FARM mark since 1930 in the insurance industry, and since 1999 in the banking industry. Complainant has registered its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996). Complainant has expended substantial time and money to develop good will surrounding the STATE FARM mark, and has conducted business using the <statefarm.com> domain name since 1995. Complainant further does not allow its agents to use the STATE FARM mark in any domain name.
Respondent, The Scott Mishler Agency c/o Scott Mishler, registered the <scottmishlerstatefarm.com> and <tucsonstatefarm.com> domain names on February 28, 2009. The disputed domain names resolve to web pages that contain numerous links for various insurance products and companies that compete with Complainant in the insurance industry. The resolving web pages also indicate that they are parked free courtesy of Respondent’s registrar.
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.
Complainant has
submitted evidence of its STATE FARM mark with the USPTO (Reg. No.
1,979,585 issued June 11, 1996). The
Panel finds that Complainant has therefore adequately met its burdens under
Policy ¶ 4(a)(i) by demonstrating its rights in the STATE
FARM mark. See
Reebok Int’l Ltd. v.
The <scottmishlerstatefarm.com> and <tucsonstatefarm.com>
domain names contain Complainant’s STATE FARM mark with the following changes:
(1) the removal of the space in the STATE FARM mark; (2) the addition of the generic
top-level domain “.com;” and (3) the additions of the name “scott mishler” or
geographic qualifier “tucson.” The Panel
wishes to note that the removal of a space in a mark and the addition of a
generic top-level domain are immaterial alterations in a Policy ¶ 4(a)(i) analysis, as the parameters of domain names forbid the
use of spaces and demand the use of top-level domains. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum
Jan. 7, 2001) (“spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The remaining added words in the disputed
domain names can be dispensed with in short order: (1) the name “scott mishler”
is not the dominant element of the domain name, as the record demonstrates that
the STATE FARM mark enjoys more public awareness than this name; and (2) the
addition of the geographic location “tucson” likewise adds no meaningful
distinction of merit, as one could assume that this domain name merely reflects
Complainant’s presence in that area. For
these reasons, the Panel finds that the disputed domain names are each
confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor
the suffix ‘.com’ detract from the overall impression of the dominant part of
the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also Warner Bros. Entm’t
Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the
addition of generic terms to Complainant’s HARRY POTTER mark in the
respondent’s <shop4harrypotter.com> and <shopforharrypotter.com>
domain names failed to alleviate the confusing similarity between the mark and
the domain names); see also Gannett Co.
v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a
domain name consisting of a well-known mark, combined with a geographically
descriptive term or phrase, is confusingly similar to the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant asserts that Respondent is not authorized to use
Complainant’s mark in any form, much less in any domain name. Moreover, Complainant contends that
Respondent’s alleged attempt to become an agent of Complainant is irrelevant,
in that Complainant’s agents are not permitted to use Complainant’s mark in any
domain name. The Panel further notes
that the WHOIS information lists Respondent as “The
Scott Mishler Agency c/o Scott Mishler.”
In light of the evidence in the record, which is not contradicted by
Respondent, the Panel finds that Respondent is not commonly known by the disputed
domain names. Therefore, the Panel finds
that Respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(c)(ii). See 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); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding
that the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”).
The disputed domain names resolve to web pages that display
click-through advertising and links for Complainant’s competitors in the
insurance industry. While the web pages
note that the pages are parked free courtesy of the Registrar, the Panel notes
previous UDRP precedent finding that a respondent is responsible for the
content of its resolving websites or web pages at the disputed domain
names. See Netbooks, Inc. v. Lionheat Publ’g,
FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that
Respondent is responsible for the content of any website using the domain name
at issue, and cannot pass that responsibility off to its registrar or domain
name service provider.”). The Panel
presumes here that Respondent obtains some form of commercial benefit from its
use of the disputed domain name, whether through the click-through links or
some other form of referral fee. There
is no evidence within the record that would indicate Respondent does not seek
such commercial gain. Therefore, the
Panel finds that Respondent has not created 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 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 ALPITOUR S.p.A. v.
balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that
“using the confusingly similar <viaggidea.com> domain name to operate a
website that features links to various commercial websites from which
Respondent presumably receives referral fees….is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panels that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain names resolve to web pages that display
click-through advertising for Complainant’s direct competitors within the
insurance industry. As the Panel has
found that Respondent is responsible for the content at its resolving web
pages, the maintenance of such content, without any evidence from Respondent
indicating otherwise, indicates an intent to disrupt
Complainant’s business. Therefore, the
Panel finds that Respondent has engaged in bad faith registration and use under
Policy ¶ 4(b)(iii).
See
The Panel has already found that the resolving web pages
were presumably designed for some sort of commercial gain for Respondent,
whether through the receipt of referral fees or otherwise. The use of Complainant’s mark in the
confusingly similar disputed domain names thus indicates that Respondent sought
to create a likelihood of confusion as to Complainant’s endorsement of the
disputed domain names and resolving web pages.
Therefore, the Panel finds that Respondent has engaged in 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 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)(iv) 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).
The Panels 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 <scottmishlerstatefarm.com> and <tucsonstatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 17, 2009
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