State Farm Mutual Automobile Insurance Company v. Techkraft c/o James Horn
Claim Number: FA0909001286087
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 <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2009.
On September 24, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> 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 September 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 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@statefarmpalmbeach.com, postmaster@statefarmpalmbeach.org, postmaster@statefarmpalmbeach.info, and postmaster@statefarmpalmbeach.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 23, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate interests in the <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> domain names.
3. Respondent registered and used the <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and the financial services industries under the STATE FARM mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) June 11, 1996 (Reg. No. 1,979,585). Complainant began using the STATE FARM mark in 1930 and uses the mark in print, on television, and on the Internet to advertise its services.
Respondent registered the <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> domain names January 14, 2009. Prior to August 24, 2009, Respondent’s <statefarmpalmbeach.com> domain name resolved to Respondent’s commercial website, which advertised insurance products from a “State Farm Independent Contractor Agent.” After August 24, 2009, Respondent’s <statefarmpalmbeach.com> domain name resolved to a blank webpage. Respondent’s <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> domain names resolve to websites displaying third-party links to websites selling insurance products in competition with Complainant.
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.
Complainant obtained a trademark registration for the STATE
FARM mark with the USPTO June 11, 1996 (Reg. No. 1,979,585). The Panel finds that Complainant established
rights in the STATE FARM mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. 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 Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the
complainant’s federal trademark registrations for the CHEAPTICKETS and
CHEAPTICKETS.COM marks were adequate to establish its rights in the mark
pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s disputed domain names, <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> are confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). Each of Respondent’s disputed domain names contains Complainant’s registered mark in its entirety, adds the geographically descriptive terms “palm beach,” and adds the generic top-level domains (“gTLD”) “.com,” “.org,” “.info,” and “.net.” The Panel finds that the addition of a geographically descriptive term to a registered mark creates a confusing similarity between the disputed domain name and the registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Skype Ltd. & 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.”). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark. 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 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.”). Therefore, pursuant to Policy ¶ 4(a)(i), 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).
Complainant has asserted that Respondent lacks rights to and legitimate interests in the disputed domain names. Once q Complainant successfully asserts a sufficient prima facie case supporting its allegations, the burden of proof on the case shifts to Respondent to show rights or legitimate interests. The Panel finds that Complainant met its burden. Respondent did not submit a Response in this proceeding, therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). 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 suggest that it has rights or legitimate interests in the subject domain names under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information identifies Respondent as “Techkraft c/o James Horn.” The Panel finds that Respondent’s WHOIS information and Respondent’s failure to provide affirmative evidence that Respondent is commonly known by the disputed domain names are proof that Respondent is not commonly known by the disputed domain names 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant provides evidence that Respondent’s use of the <statefarmpalmbeach.com> domain name prior to August 24, 2009,
resolved to Respondent’s commercial website, which advertised insurance
products from a “State Farm Independent Contractor Agent.” The Panel finds that Respondent’s use of the <statefarmpalmbeach.com>
domain name to divert Internet users by creating a likelihood of confusion
between the disputed domain name and Complainant’s mark for Respondent’s
commercial benefit is not a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i), and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795
(Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for
products relating to the famous SEIKO mark, to a website unrelated to the mark
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor
does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
After August 24, 2009, Complainant
provides evidence that Respondent is failing to make an active use of the <statefarmpalmbeach.com> domain name.
The Panel finds that Respondent’s inactive use of the <statefarmpalmbeach.com>
domain name is further evidence that Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See
Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12,
2006) (finding that the respondent’s non-use of the disputed domain names
demonstrates that the respondent is not using the disputed domain names for a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker
Enters., FA 204112 (Nat. Arb. Forum Dec.
6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active
use] of the domain name does not establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).”).
Additionally, Respondent’s <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and
<statefarmpalmbeach.net> domain names resolve to websites
displaying third-party links to websites selling insurance products in
competition with Complainant.
Presumably, Respondent benefits through the receipt of commercial
referral fees. The Panel finds that this
use does not constitute 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that the respondent’s website, which is blank but for
links to other websites, is not a legitimate use of the domain names).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration of multiple domain names containing Complainant’s STATE FARM mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
The Panel finds that Respondent intended to disrupt
Complainant’s business and take advantage of Complainant’s goodwill surrounding
its mark by displaying third-party links to Complainant’s competitors in the
insurance industry. The Panel therefore
finds that Respondent engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because
respondent used the disputed domain name to advertise goods and services of
complainant’s competitors, thereby disrupting the complainant’s business).
Additionally, Respondent has created a substantial likelihood of confusion as to the source and affiliation of the disputed domain names and the corresponding websites. Respondent benefits from such a likelihood of confusion, as it receives referral fees for the competitive insurance advertisements that are displayed to the diverted Internet users. The Panel finds this to be adequate evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant alleges that Respondent’s use, prior to August 24, 2009, of the <statefarmpalmbeach.com> domain name to intentionally cause a likelihood of confusion between the <statefarmpalmbeach.com> domain name and Complainant’s mark is evidence of bad faith because Respondent was commercially benefitting by offering insurance products at the website that resolved from the <statefarmpalmbeach.com>. The Panel finds that Respondent’s use of the disputed domain name to commercially benefit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that it may also consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant argues that Respondent’s inactive use of the <statefarmpalmbeach.com> domain name after August 24, 2009 is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel finds that such non-use constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Complainant satisfied the elements of ICANN 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 <statefarmpalmbeach.com>, <statefarmpalmbeach.org>, <statefarmpalmbeach.info>, and <statefarmpalmbeach.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 5, 2009.
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