State Farm Mutual Automobile
Insurance Company v. Get Rates Online, Inc. c/o
Claim Number: FA1002001306728
PARTIES
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 <statefarmhomeinsurancealternatives.com>,
registered with Fastdomain Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically February 5, 2010. With its
Complaint, Complainant also chose to proceed entirely electronically under the
new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the
new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the
Forum’s website.
On February 5, 2010, Fastdomain Inc. confirmed by e-mail to the
National Arbitration Forum that the <statefarmhomeinsurancealternatives.com>
domain name is registered with Fastdomain Inc.
and that Respondent is the current registrant of the disputed name. Fastdomain
Inc. verified that Respondent is bound by the Fastdomain 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 February 12, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of March 4, 2010, by which Respondent could file
a Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to postmaster@statefarmhomeinsurancealternatives.com. Also, on February
12, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A letter Response was received February 22, 2010, but was determined to
be deficient because it was received in hard copy only and not in electronic
format, as required under ICANN Rule 5.
Respondent did not indicate assent to participate in an electronic
process; therefore Respondent’s submission was required to be sent in hard copy
and electronically per the version of UDRP Rule 5 currently in effect.
No Additional Submissions were received.
On March 10, 2010, 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.
Preliminary Issue: Deficient Response
Respondent’s Response was submitted only in hard copy prior to the Response deadline and no electronic submission was received. The National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, when exercising discretion, favors substance over procedure; but without evidence in support of Respondent’s contentions, Respondent stands in the position of one who has defaulted. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Preliminary Issue: Consent-to-Transfer
Respondent consents to transfer the <statefarmhomeinsurancealternatives.com>
domain name to Complainant. However, after the initiation of this
proceeding, Fastdomain Inc. placed a hold on Respondent’s account and therefore
Respondent cannot transfer the disputed domain name while this proceeding is
still pending. As a result, the Panel finds that in a circumstance such
as this, where Respondent has not contested the transfer of the disputed domain
name but instead agrees to transfer the domain name in question to Complainant,
the Panel should not forego the traditional UDRP analysis because Complainant
has not implicitly consented in its Complaint to the transfer of the
disputed domain name without a decision on the merits by the Panel. The
Panel finds also that the “consent-to-transfer” approach is one way that
cybersquatters avoid adverse findings against them and thus finds that a
decision on the merits should be preferred. In Graebel Van
Lines, Inc. v.
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel finds it appropriate to decide this case under the elements of the UDRP.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant raises the following points in
its submission:
1. Respondent registered a domain name that is
confusingly similar to Complainant’s protected STATE FARM mark.
2. Respondent has no rights to or legitimate
interests in the disputed domain name, and
3. Respondent registered and used the disputed
domain name in bad faith.
B. In a letter dated February 17, 2010,
1. He did not intend to infringe on
Complainant’s STATE FARM MARK.
2. He talked to a Forum representative and said
he would assign the disputed domain name to her.
3. He emailed his webmaster to terminate the
disputed domain name.
4. He has not published the disputed domain
name.
5. He does not need the disputed domain name.
6. He is not experienced enough to know how to
transfer the name.
7. He did not address the required elements in his
letter.
C. No Additional Submissions
were filed.
FINDINGS
Complainant established rights and interests
in its STATE FARM mark.
Complainant has shown legal rights in the
mark dating from at least 1996, the date of registration.
Respondent did not show rights in the
disputed domain name that is the subject of this dispute.
Respondent registered the domain name August
19, 2009, some thirteen (13) years after Complainant acquired rights in its
well-known mark.
Respondent has not made a bona fide use of
the disputed domain name.
It is inconceivable that Respondent could
have registered the disputed domain name containing Complainant’s well known mark
in its entirety without having had knowledge and/or notice of Complainant’s
rights in the mark.
Respondent acted in bad faith in registering
and using the disputed domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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 asserts that it holds several registrations of the STATE FARM mark with various governmental trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996). The Panel finds that Complainant established rights in the STATE FARM mark under Policy ¶ 4(a)(i) through its registrations with various governmental trademark authorities throughout the world, including the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <statefarmhomeinsurancealternatives.com> domain name contains Complainant’s entire STATE FARM mark, deletes the space within the mark, adds the descriptive or generic phrase “home insurance alternatives,” and adds the generic top-level domain (“gTLD”) “.com.” None of these alterations sufficiently distinguishes the disputed domain name from Complainant’s mark and the Panel finds that the <statefarmhomeinsurancealternatives.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); 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.”).
Respondent’s letter made no contentions with regard to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must make a prima facie case in support of its allegations that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant does so, then the burden of proof shifts to Respondent to show that it does have such rights to or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that the WHOIS information for
the <statefarmhomeinsurancealternatives.com> domain name lists
“Get Rates Online, Inc. c/o
Furthermore, Complainant asserts that it has not licensed or otherwise authorized Respondent to use the STATE FARM mark. Therefore, the Panel finds that Respondent is not commonly known by the <statefarmhomeinsurancealternatives.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant provides evidence that Respondent’s disputed
domain name, <statefarmhomeinsurancealternatives.com>, resolves to
a website that displays hyperlinks to third-party websites, some of which
directly compete with Complainant’s insurance services business. The
Panel finds that Respondent’s use of the disputed domain name in this manner
does not represent a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and does not constitute 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 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)).
Respondent’s letter makes no contentions with regard to Policy ¶ 4(a)(ii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s <statefarmhomeinsurancealternatives.com> domain name resolves to a website featuring competing hyperlinks. The Panel finds that Respondent’s use of the disputed domain name is calculated to disrupt Complainant’s business. The Panel also finds that such a disruption supports findings of 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)).
Complainant contends that Respondent is using the disputed domain name to resolve to a website displaying third-party websites that compete with Complainant. Complainant further contends that Respondent presumably receives compensation in the form of click-through fees for the disputed domain name. The Panel finds that Respondent’s confusingly similar <statefarmhomeinsurancealternatives.com> domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. The Panel further finds that Respondent is commercially gaining from this likelihood of confusion through its presumed receipt of click-through fees, which gain also supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). 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).”).
Respondent’s letter
made no contentions with regard to Policy ¶ 4(a)(iii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmhomeinsurancealternatives.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: March 24, 2010
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