State Farm Mutual Automobile Insurance Company v. advisorbackgroundcheck.com c/o Lisa Binkholder
Claim Number: FA0910001291034
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 <statefarmagentcheck.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2009.
On October 23, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmagentcheck.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 October 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 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@statefarmagentcheck.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 3009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <statefarmagentcheck.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmagentcheck.com> domain name.
3. Respondent registered and used the <statefarmagentcheck.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (e.g. Reg. No. 1,979,585 issued June 11, 1996) in connection with both the insurance and financial services industries.
Respondent, advisorbackgroundcheck.com c/o Lisa Binkholder, registered the <statefarmagentcheck.com> domain name on July 15, 2009. The disputed domain name resolves to a website that contains numerous links to various insurance products and companies, including those in direct 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."
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 under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <statefarmagentcheck.com> domain name is confusingly similar to Complainant’s
STATE FARM mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s STATE FARM mark because Respondent’s
domain name merely adds the generic term “agent check” and the generic
top-level domain name (“gTLD”) “.com” to the entirety of Complainant’s STATE
FARM mark. The Panel finds that the
addition of the words “agent check” creates a confusing similarity between the
disputed domain name and the Complainant’s mark, especially where, as here, the
generic terms have a relationship to Complainant’s business. See
Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); 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).”). The Panel also finds that
the addition of a gTLD to a registered mark is irrelevant in distinguishing a
disputed domain name and mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is
irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions. Respondent has failed to submit a Response to
these proceedings. See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006)
(finding the “complainant must first make a prima facie case that [the]
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to
[the] respondent to show it does have rights or legitimate interests.”); 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).
The Panel will examine the record to determine if Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c).
The WHOIS information lists the registrant as “advisorbackgroundcheck.com c/o Lisa Binkholder.” Complainant alleges that Respondent is not associated with, affiliated with, or sponsored by Complainant. Complainant has not authorized Respondent to register the domain name or to use Complainant’s STATE FARM mark for Respondent’s business purposes. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <statefarmagentcheck.com> domain name was registered on July 15, 2009. The disputed domain name resolves to a website that contains numerous links to various insurance products and companies, including those in direct competition with Complainant. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <statefarmagentcheck.com> domain name to operate a click-through website in competition with Complainant constitutes a disruption of Complainant’s business and constitutes bad faith registration and use pursuant to 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 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).
Respondent’s use of the confusingly similar disputed domain
name in order to intentionally attract Internet users to its website by
creating a strong likelihood of confusion with Complainant’s STATE FARM mark is
further evidence of bad faith. The Panel
presumes Respondent is profiting from the receipt of click-through fees via the
website resolving from the disputed domain name. Therefore, the Panel finds this use of the
disputed domain name constitutes bad faith registration and use under Policy ¶
4(b)(iv). See
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 <statefarmagentcheck.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 9, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum