State Farm Mutual Automobile Insurance Company v. H.W. Barnes
Claim Number: FA0908001280707
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
NAME
The domain name at issue is <statefarmmutualautoinsurance.com>, registered with Moniker Online Services LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 21, 2009.
On August 21, 2009, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmmutualautoinsurance.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 14, 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@statefarmmutualautoinsurance.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 18, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant began using the STATE FARM service mark in 1930, and subsequently registered it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585, issued June 11, 1996).
Complainant uses its STATE FARM mark in conjunction with the provision of its insurance and financial services.
Respondent registered the <statefarmmutualautoinsurance.com> domain name on April 20, 2009.
Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a website featuring advertisement links that further resolve to the websites of Complainant’s competitors in the insurance industry.
Respondent’s <statefarmmutualautoinsurance.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the domain name <statefarmmutualautoinsurance.com>.
Respondent registered and uses the <statefarmmutualautoinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
There is no dispute as to Complainant’s allegation that it
obtained a service mark registration for the STATE FARM mark with the USPTO on
June 11, 1996 (Reg. No. 1,979,585). Complainant has thus established
rights in the STATE FARM mark sufficient for the purposes of Policy ¶ 4(a)(i). See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding
that a trademark registration adequately demonstrates a complainant’s rights in
a mark under Policy ¶ 4(a)(i)); see also
Complainant contends that Respondent’s <statefarmmutualautoinsurance.com> domain name is confusingly similar to its STATE FARM mark under Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s STATE FARM mark in its entirety, with the addition of the phrase, “mutual auto insurance,” which is descriptive of the services that Complainant offers, and with the affixation of the generic top-level domain “.com.” Such alterations are insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Thus we conclude that Respondent’s domain name <statefarmmutualautoinsurance.com> is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):
The
additions of generic words with an obvious relationship to Complainant’s
business and a gTLD renders the disputed domain name confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity between a domain and a competing mark where that domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business).
Complainant has therefore satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain name <statefarmmutualautoinsurance.com>. The burden then shifts to Respondent to show that it does indeed have rights to or legitimate interests in the disputed domain name. 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.
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Because no response was submitted in this case, we may comfortably presume that Respondent has no rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Nonetheless, we will examine the record in consideration of the factors set out in Policy ¶ 4(c) to determine if there is in it any basis for concluding that Respondent has rights to or interests in its domain name adequate to satisfy the standards of the Policy.
We begin by noting that Respondent does not dispute the
assertions of the Complaint to the effect that its <statefarmmutualautoinsurance.com>
domain name resolves to a website containing advertisement links or that those
links resolve to the websites of Complainant’s competitors in the insurance
industry. We may presume from the
circumstances presented that Respondent generates revenue from this arrangement
through the receipt of click-through fees for Internet users that click on these
links. From this we conclude that Respondent
has failed to use the disputed domain name in connection with 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005)
(finding that a 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 business of a complainant was neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see
also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that a
respondent’s use of a domain name confusingly similar to a competing mark to
divert Internet users to websites operated in competition with the business of
a complaining mark holder 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)).
We also observe that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant as “H.W. Barnes.” This, together with the lack of evidence in the record to suggest otherwise, brings us to the conclusion that Respondent is not commonly known by the <statefarmmutualautoinsurance.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the WHOIS information and a complainant’s assertion that it did not authorize or license that respondent’s use of its mark in a domain name).
Complainant has thus satisfied Policy ¶ 4(a)(ii).
We have already taken as true the allegations that Respondent’s domain name, registered on April 20, 2009, resolves to a website featuring links to Complainant’s business competitors. The disputed domain name, which we have concluded is confusingly similar to Complainant’s service mark, likely attracts Internet users that are attempting to access Complainant’s website. Those Internet users are thus unknowingly redirected to the websites of Complainant’s competitors. Respondent’s use of the contested domain name in the manner alleged constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use of the domain 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 domain name confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s business competitors represents bad faith registration and use of the domain 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).
Moreover, we are comfortable in presuming from the circumstances alleged, and not denied, that Respondent receives click-through fees from the use of the described links. Respondent is thus attempting to profit by creating a likelihood of confusion as to Complainant’s possible affiliation with the disputed domain name and the resolving website. We conclude, therefore, that Respondent’s use of the disputed domain name in the manner alleged constitutes bad faith registration and use of the contested domain under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using it to offer links to third-party websites that offered services similar to those offered by a 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).
For the reasons indicated, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarmmutualautoinsurance.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 1, 2009
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