State Farm Mutual Automobile Insurance Company v. Host Master c/o Transure Enterprise Ltd
Claim Number: FA1002001308143
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 <state3farm.com>, registered with Above, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 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 submitting an “opt-in” form available on the Forum’s website.
On February 17, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <state3farm.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 February 22, 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@state3farm.com. Also on February 22, 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 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 (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. Respondent’s <state3farm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <state3farm.com> domain name.
3. Respondent registered and used the <state3farm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, is a nationally known company doing
business in both the insurance and financial services industries. Complainant owns trademark registrations for
the STATE FARM and related marks with the United States Patent and Trademark Office
(“USPTO”) (e.g., Reg. No.1,979,585
issued June 11, 1996).
Respondent, Host Master c/o Transure Enterprise Ltd, registered the <state3farm.com> domain name on November 7, 2009. The disputed domain name redirects to a directory website featuring various third-party links, many of which relate to and compete 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.
Complainant owns trademark registrations for the STATE FARM
and related marks with the USPTO (e.g.,
Reg. No. 1,979,585 issued June 11, 1996).
The Panel finds that such trademark registrations sufficiently establish
Complainant’s rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i), regardless of whether the Respondent operates or lives
in the same country where the mark is registered. See Reebok Int’l Ltd. v.
Complainant contends that
Respondent’s <state3farm.com>
disputed domain name is confusingly similar to Complainant’s STATE FARM
mark. The only differences between
Complainant’s mark and the disputed domain is the introduction of a “3” between
the words of Complainant’s mark, the deletion of the spaces between the words,
and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding one letter or
number into Complainant’s mark does not create a distinct mark for the purposes
of Policy ¶ 4(a)(i). See Am. Online, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and
legitimate interests in the disputed domain name. As Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii),
Respondent now has the burden of demonstrating rights and legitimate interests
in the disputed domain name. Respondent,
however, failed to respond to the complaint and thus has not met the burden of
demonstrating rights and legitimate interests.
The Panel accordingly finds that Complainant’s allegations are true and
Respondent lacks rights and legitimate interests in the disputed domain
name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where the respondent fails to
respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
The Panel elects, however, to analyze the evidence in the record
according to the Policy ¶ 4(c) factors to determine whether Respondent has
rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name since the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name. The Panel finds that the failure of the WHOIS information to reflect that Respondent is commonly known by the disputed domain supports a conclusion that Respondent therefore lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant further argues that there is no evidence supporting Respondent’s rights and legitimate interests in the disputed domain name because Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶¶ 4(c)(i) and 4(c)(iii). Respondent’s disputed domain name redirects to a directory website with no function other than displaying links to other web pages, many of which are advertised in competition with Complainant. The directory website presumably profits Respondent through “pay-per-click” fees. The Panel finds that such directory websites do not comply with the requirements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), indicating Respondent’s lack of rights and legitimate interests in the disputed domain name. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant alleges that Respondent introduces a single
extra digit (“3”) into Complainant’s mark in order to capture Internet users
unknowingly making a typographical error when entering Complainant’s mark and
redirect them to Respondent’s site. The
Panel finds this practice is typosquatting, which is evidence that Respondent
lacks rights and legitimate interests in the disputed domain name. See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant asserts that upon communication of a
cease-and-desist letter by Complainant to Respondent, Respondent offered to
sell the disputed domain name to Complainant for $500.00. The Panel finds that such an offer to sell
the disputed domain name in light of the other surrounding circumstances
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) (finding bad faith where the respondent offered domain names for
sale).
Respondent uses the disputed domain name to redirect Internet users to a directory page featuring many third-party links offering services in competition with Complainant. This directory page substantially disrupts Complainant’s business because unsuspecting Internet users are directed away from Complainant’s actual site and may subsequently follow one of the displayed links to arrive a competitor’s site. The Panel finds that such efforts to disrupt Complainant’s business show bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Respondent’s operation of a directory website reached via
the disputed domain name presumably financially benefits Respondent. By displaying links that are related to
Complainant’s business, there is a greater likelihood that the links will be of
interest to Internet users arriving at the site and that the Internet users
will subsequently click on one of them.
Each click results in profit to Respondent by way of “click-through”
fees. The Panel finds that Respondent’s
efforts to increase traffic to its site and consequently profit by attracting
Complainant’s customers is evidence of bad faith registration and use according
to Policy ¶ 4(b)(iv).
See Dell Inc. v. Innervision Web Solutions,
FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad
faith under Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services);
The Panel has
previously concluded that Respondent is using the confusingly similar disputed
domain for the purpose of typosquatting.
The Panel finds typosquatting is evidence in and of itself that
Respondent has registered and used the disputed domain name in bad faith
according to Policy ¶ 4(a)(iii). See Canadian
Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see
also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005)
(finding that the respondent’s registration and use of the <nextell.com>
domain name was in bad faith because the domain name epitomized typosquatting
in its purest form).
The Panel finds 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 <state3farm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 7, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum