State Farm Mutual Automobile Insurance Company v. Lance Zeidman
Claim Number: FA1002001308127
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 <statefarmlnsurance.net>, registered with Mesh Digital Limited.
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 February 15, 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 18, 2010, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <statefarmlnsurance.net> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited verified that Respondent is bound by the Mesh Digital Limited 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 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@statefarmlnsurance.net by e-mail. Also on February 23, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 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.
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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <statefarmlnsurance.net>, is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent has no rights to or legitimate interests in the <statefarmlnsurance.net> domain name.
3. Respondent registered and used the <statefarmlnsurance.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, provides insurance and financial services. Complainant has operated under its STATE FARM INSURANCE mark since 1930. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its STATE FARM INSURANCE mark (e.g., Reg. No. 1,125,010 issued September 11, 1979).
Respondent, Mesh Digital Ltd., registered the <statefarmlnsurance.net> domain name July 13, 2009. The disputed domain name fails to resolve to an active website.
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.
Past panels have held that a trademark registration with the
USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <statefarmlnsurance.net>
domain name is confusingly similar to Complainant’s STATE FARM INSURANCE
mark. The disputed domain name removes
the spaces separating the terms of Complainant’s mark and misspells
Complainant’s mark by adding the letter “l” instead of the letter
“i." The disputed domain name also
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that use of a common
misspelling coupled with the removal of spaces and the addition of a gTLD fails
to adequately distinguish the disputed domain name from Complainant’s
mark. See George Weston Bakeries Inc. v. McBroom,
FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the
space between terms of a mark still rendered the <gwbakeries.mobi> domain
name identical to the complainant’s GW BAKERIES mark); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum
May 29, 2001) (finding the <belken.com> domain name confusingly similar
to the complainant's BELKIN mark because the name merely replaced the letter
“i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v.
Hyn, FA 703175 (Nat. Arb. Forum July 5,
2006) (finding the <intellus.com> domain name to be confusingly similar
to the complainant’s INTELIUS mark because the domain name differed from the
mark by one letter and was visually similar); see also Jerry Damson, Inc.
v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the <statefarmlnsurance.net> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a sufficient prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, this Panel examines the record to determine whether evidence in the submission suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “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.”).
The WHOIS information identifies the domain name registrant as “Mesh Digital Ltd,” which is not similar to the <statefarmlnsurance.net> domain name. Complainant asserts that Respondent is not authorized or licensed to use the STATE FARM INSURANCE mark. Respondent has not presented any evidence and the Panel has not found any evidence in the record that would support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <statefarmlnsurance.net> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); 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 fails to make an active use of the <statefarmlnsurance.net> domain name. The disputed domain name resolves to a website that has the title “State Farm Insurance,” but does not have any other content. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence that Respondent’s use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
In addition, Respondent’s use of the <statefarmlnsurance.net>
domain name, a common misspelling of Complainant’s STATE FARM INSURANCE mark,
constitutes typosquatting. The Panel
finds that Respondent’s use of a disputed domain name, that contains a common
misspelling of the STATE FARM INSURANCE mark, to redirect Internet users
seeking Complainant, is further evidence that Respondent fails to establish
rights to or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).
See Microsoft
Corp. v. Domain Registration
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel may consider the totality of the circumstances
when conducting a Policy ¶ 4(a)(iii) analysis and 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.”).
Respondent’s <statefarmlnsurance.net> domain name does not resolve to an active website. The confusingly similar disputed domain name resolves to a blank website except for the website title “State Farm Insurance.” The Panel finds that Respondent’s failure to make an active use of the disputed domain name supports findings that Respondent acted in bad faith in registering and using the <statefarmlnsurance.net> domain name under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Furthermore, Respondent has engaged in typosquatting through its use of the <statefarmlnsurance.net> domain name, which contains a common misspelling of Complainant’s STATE FARM INSURANCE mark. Therefore, the Panel finds that Respondent’s engagement in the practice of typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
The Panel finds that Respondent registered and held the disputed domain name in bad faith and 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 <statefarmlnsurance.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 7, 2010
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