State Farm Mutual Automobile Insurance Company v. Glass Auto Claims
Claim Number: FA0909001282900
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 <statefarmautoclaims.com>, 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.
The Honorable Charles K. McCotter, Jr. (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 4, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoclaims.com> 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 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 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@statefarmautoclaims.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <statefarmautoclaims.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmautoclaims.com> domain name.
3. Respondent registered and used the <statefarmautoclaims.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, does business in both the insurance and financial services industry. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585). For over seventy years, Complainant has marketed its products and services under the STATE FARM mark.
Respondent, Glass Auto Claims, registered the <statefarmautoclaims.com> domain name on June 24, 2009. The <statefarmautoclaims.com> domain name resolves to a website that says it is parked free courtesy of the registrar, and contains links for various insurance products and services.
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.
The Panel finds that Complainant has established rights in
the STATE FARM mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (Reg. No. 1,979,585 issued June 11, 1996). See
Miller Brewing
Complainant contends that
Respondent’s <statefarmautoclaims.com> domain name is confusingly similar to its STATE FARM
mark. The disputed domain name
differs from Complainant’s mark in three ways: (1) the space between the words
has been removed; (2) the terms “auto claims,” which are related to
Complainant’s insurance business, have been added to the end of the mark; and
(3) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the addition of a term
that describes a complainant’s business does not sufficiently distinguish a
domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i), nor
does the removal of the space between words. The Panel also finds that the addition
of a gTLD also does not reduce the likelihood of confusion between the domain
name and the mark, because every domain name must contain a top-level
domain. Therefore, the Panel finds that
these changes do not minimize or eliminate the resulting likelihood of
confusion, and so Respondent’s disputed domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Am. Int’l Group, Inc. v. Ling Shun
Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition
of the term “assurance,” to the complainant’s AIG mark failed to sufficiently
differentiate the name from the mark under Policy ¶ 4(a)(i) because the
appended term related directly to the complainant’s business); see also Wells Fargo Home Mortgage v. domains
Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006) (finding the addition
of the term “your” to the WELLS FARGO mark in the
<yourwellsfargomortgage.com> domain name to be insufficient to
distinguish the disputed domain name from the complainant’s mark under Policy ¶
4(a)(i)); see
also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545
(Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is
irrelevant when establishing whether or not a mark is identical or confusingly
similar, because top-level domains are a required element of every domain
name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has not responded to the Complaint in this case. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <statefarmautoclaims.com>
domain name nor has it ever been the owner or licensee of the STATE FARM mark.
The WHOIS record for the disputed domain name lists Respondent as “Glass Auto Claims.” Because of this evidence, along with the fact
that Respondent has failed to show any evidence contrary to Complainant’s
contentions, the Panel finds that Respondent is not commonly known by the disputed domain name
pursuant to 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 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 <statefarmautoclaims.com> domain name resolves to a website that features links to websites offering the products and services of Complainant’s competitors. The Panel finds that the use of the <statefarmautoclaims.com> domain name to promote Complainant’s competitors is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor 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 Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name, registered June 24, 2009, to divert Internet customers seeking
Complainant’s website to the competitive websites that resolve from the
disputed domain name, through the confusion caused by the similarity between
the STATE FARM mark and the <statefarmautoclaims.com>
domain name. The Panel finds
that Respondent’s use of the <statefarmautoclaims.com>
domain name disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining
commercially through this diversion, through click-through fees that Respondent
is presumably receiving from its use of the disputed domain name. The Panel
finds that Respondent is intentionally using the <statefarmautoclaims.com> domain name for commercial gain
through a likelihood of confusion with Complainant’s mark, and so, pursuant to
Policy ¶ 4(b)(iv), the Panel finds that this use for commercial gain also
constitutes evidence of registration and use in bad faith. See
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)); see also
The Panel finds 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 <statefarmautoclaims.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 8, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum