State Farm Mutual Automobile Insurance Company v. Thi Thanh Nguyen c/o VPDD UBGM ltd
Claim Number: FA0910001291036
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 <mystatefarmquote.com>, registered with Moniker.
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 October 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2009.
On October 26, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <mystatefarmquote.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@mystatefarmquote.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 23, 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 engages in business in both the insurance and the financial services industries under the STATE FARM service mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585).
Complainant began using the STATE FARM service mark in 1930, and continues to use the mark in print, on television, and on the Internet to advertise its services.
Respondent registered the <mystatefarmquote.com> domain name February 1, 2009.
Respondent’s domain name resolves to a website displaying links to third-party websites marketing products and services in competition with the business of Complainant.
Respondent’s <mystatefarmquote.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights or legitimate interests in the domain name <mystatefarmquote.com>.
Respondent’s use of the disputed domain name as described creates confusion among Internet users caused by virtue of the similarity between the STATE FARM mark and the disputed domain name.
Respondent gains commercially through this diversion of Internet users seeking information about Complainant through the receipt of click-through fees.
Respondent both registered and uses the disputed <mystatefarmquote.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.
Complainant has established rights in the STATE FARM service
mark for purposes of Policy ¶ 4(a)(i) through its mark
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
Complainant argues that Respondent’s <mystatefarmquote.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains Complainant’s mark in its entirety, and merely adds the generic terms “my” and “quote,” and the generic top-level domain (“gTLD”) “.com.” The term “my” is generic, with no distinguishing significance, and the term “quote” has a recognizable relationship to Complainant’s offering of insurance products. Therefore, the addition of these terms to Complainant’s mark in forming the disputed domain name creates a confusing similarity between the domain and the mark. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); 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 … renders the disputed domain name confusingly similar to Complainant’s
mark pursuant to Policy ¶ 4(a)(i).
Likewise, the addition of a gTLD to a mark in forming a domain name is irrelevant in distinguishing the resulting domain name from the 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to a mark is insufficient to differentiate a disputed domain name from the mark).
Therefore, the Panel finds that Respondent’s <mystatefarmquote.com> domain name is confusingly similar to
Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights or legitimate interests in a disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
[C]omplainant
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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has established a prima facie case sufficient for purposes of the Policy, while Respondent has failed to submit a Response in this proceeding. We are therefore entitled to conclude that Respondent has no rights to or interests in the contested domain name which are congnizable under the Policy. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004):
Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.
We will nonetheless examine the record before us, by reference to the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has any such rights or interests.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Moreover, the relevant WHOIS information identifies the registrant of the disputed domain name only as “Thi Thanh Nguyen c/o VPDD UBGM ltd,” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name. Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain, and where a complainant had not authorized that 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 that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain).
We also note that there is no dispute as to Complainant’s
allegation to the effect that Respondent’s domain name resolves to a website
featuring advertisements and links relating to Complainant’s competitors in the
insurance and financial services industry. We may infer from the
circumstances presented that Respondent profits, by way of click-through fees,
from these links to Complainant’s competitors. We conclude, therefore,
that Respondent’s use of the disputed domain name is not in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain name under
Policy ¶ 4(c)(iii). See 24
Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant contends that Respondent uses the disputed
domain name to divert Internet customers seeking Complainant’s website to the
competitive websites that resolve from the disputed domain name, and that this
practice creates confusion among Internet users by virtue of the similarity
between the STATE FARM mark and the disputed
domain name. Respondent does
not deny these allegations. We conclude,
therefore, that Respondent’s use of the disputed
domain name as alleged disrupts Complainant’s business, and is therefore
evidence of registration and use of the contested domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
See also Tesco Pers.
Fin. Ltd. v. Domain Mgmt. Servs.,
FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested
domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s business competitors
represents bad faith registration and use of the domain name under Policy ¶
4(b)(iii)).
Complainant further contends that Respondent is gaining
commercially from this diversion of Internet users seeking information about
Complainant through the receipt of click-through fees. Again, Respondent does
not deny this allegation. We conclude,
therefore, that Respondent is using the disputed
domain name for commercial gain by exploiting a likelihood of
confusion between the domain name and Complainant’s mark. This use of the
domain name for commercial gain constitutes further evidence of registration
and use of the domain name 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
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 these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <mystatefarmquote.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 8, 2009
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