State Farm Mutual Automobile Insurance Company v. Tri Lestari
Claim Number: FA0909001282840
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 <state-farm-auto-insurance.net>, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2009.
On September 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <state-farm-auto-insurance.net> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 September 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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 postmaster@state-farm-auto-insurance.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <state-farm-auto-insurance.net> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <state-farm-auto-insurance.net> domain name.
3. Respondent registered and used the <state-farm-auto-insurance.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company,
provides insurance and financial services. Complainant holds multiple trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
its STATE FARM INSURANCE mark (e.g., Reg. No. 1,125,010 issued September 11,
1979). Complainant also holds multiple
trademark registrations for its STATE FARM INSURANCE mark in
Respondent, Tri Lestari, registered the <state-farm-auto-insurance.net> domain name on February 6, 2009. The disputed domain resolves to a website featuring insurance information and hyperlinks to Complainant’s competitors in the insurance services industry.
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.
Previous panels have held that trademark registration with
the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶
4(a)(i).
Complainant alleges Respondent’s <state-farm-auto-insurance.net> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark. In the disputed domain name, Respondent has simply added three hyphens, the descriptive term “auto,” which is descriptive of Complainant’s insurance business, and the generic top-level domain (“gTLD”) “.net” to Complainant’s mark. The Panel finds the additions of hyphens, a descriptive term, and a gTLD are insufficient to adequately distinguish the disputed domain name from Complainant’s mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also 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 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 <state-farm-auto-insurance.net> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <state-farm-auto-insurance.net>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Talk
City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given
Respondent’s failure to submit a substantive answer in a timely fashion, the
Panel accepts as true all of the allegations of the complaint.”); 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.”).
Respondent uses the confusingly similar <state-farm-auto-insurance.net> domain name to resolve to a website featuring insurance information and hyperlinks relating to Complainant’s competitors in the insurance industry. Respondent also utilizes Complainant’s STATE FARM INSURANCE mark in the title of the website as well. Internet users, interested in Complainant and Complainant’s insurance services, may become confused as to Complainant’s affiliation and sponsorship of the resolving website and may purchase insurance products from Complainant’s competitors instead of from Complainant. The Panel finds Respondent’s use of the confusingly similar disputed domain name is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to 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 associated with, affiliated with, or sponsored by Complainant. Complainant has not authorized Respondent to register the disputed domain name or to use the STATE FARM INSURANCE mark for Respondent’s business purposes. Complainant provides the WHOIS information which lists Respondent as, “Tri Lestari,” which is not similar to the disputed domain name or Complainant’s mark. Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the <state-farm-auto-insurance.net> domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <state-farm-auto-insurance.net> domain name resolves to a website featuring
information about insurance and hyperlinks to Complainant’s competitors in the
insurance services industry. Internet
users, interested in Complainant and Complainant’s insurance services, may
instead purchase insurance services from Complainant’s competitors because of
Respondent’s use of a confusingly similar disputed domain name. The Panel finds Respondent’s use of the
disputed domain name disrupts Complainant’s insurance business, which 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)).
The Panel infers that Respondent
receives click-through fees for diverting Internet users to search links and
advertisements. Because the disputed
domain name is confusingly similar to Complainant’s mark, Internet users
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Therefore, Respondent’s use of the <state-farm-auto-insurance.net>
domain name to profit from Internet
users’ confusion constitutes bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See Bank of Am. Corp. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <state-farm-auto-insurance.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret), Panelist
Dated: October 23, 2009
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