State Farm Mutual Automobile Insurance Company v. Excellence to Market c/o Robert Carter
Claim Number: FA1004001320694
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 <statefarmapproved.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on April 22, 2010.
On April 26, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmapproved.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 April 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@statefarmapproved.com. Also on April 26, 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 May 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 "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 <statefarmapproved.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmapproved.com> domain name.
3. Respondent registered and used the <statefarmapproved.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, holds multiple trademark registrations of
its STATE FARM mark with the United States Patent and Trademark Office
(“USPTO”) (e.g., Reg. No. 1,979,585
issued June 11, 1996) in connection with auto, life, and home insurance
products and services.
Respondent, Excellence to Market c/o Robert Carter, registered the disputed domain name on February 6, 2010. The disputed domain name resolves to a website which indicates it is parked free courtesy of an unrelated third-party and which contains numerous links for 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.
Complainant asserts rights in its STATE FARM mark through
its registration of the mark with the USPTO (e.g., Reg. No. 1,979,585 issued June 11,
1996). The Panel finds that
Complainant’s registration of its STATE FARM mark with the USPTO is sufficient
evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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 Miller Brewing
Complainant alleges that Respondent’s <statefarmapproved.com> domain name is confusingly
similar to Complainant’s STATE FARM mark.
Respondent’s disputed domain name merely adds the generic term
“approved,” deletes the space between the words in Complainant’s mark, and adds
the generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s
mark. The Panel finds that the addition
of a generic term creates a confusing similarity between the disputed domain
name and Complainant’s mark. See 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 Sutton Group Fin. Servs. Ltd. v.
Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name
<suttonpromo.com> is confusingly similar to the SUTTON mark because the
addition of descriptive or non-distinctive elements to the distinctive element
in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). The Panel also
finds that the elimination of spaces between the words in Complainant’s mark
and the addition of a gTLD are insufficient to distinguish the disputed domain
name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its
allegations, then the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel
finds that based on the arguments made in the Complaint, Complainant has
established a prima facie case in
support of its contentions and Respondent has failed to submit a Response to
these proceedings. 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 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).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant further argues that it has not authorized Respondent to register the disputed domain name or to use Complainant’s mark. The WHOIS information for the disputed domain name lists the registrant as “Excellence to Market c/o Robert Carter” which Complainant contends is not similar to Complainant’s STATE FARM mark. Therefore, without any 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 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).
Respondent’s <statefarmapproved.com>
domain name
was registered on February 6, 2010. The disputed domain name resolves to a
website which indicates it is parked free courtesy of an unrelated third-party
and which contains numerous links for 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) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v.
Citipublications, FA 692150 (Nat. Arb.
Forum July 17, 2006) (finding that the respondent’s parking of a domain name
containing the complainant’s mark for the respondent’s commercial gain did not
satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see
also 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 St. Farm Mutual Auto. Insr.
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent’s use of the disputed
domain name disrupts Complainant’s business.
Respondent’s disputed domain name resolves to a parked website featuring
links to third-parties that directly compete with Complainant in the insurance
industry. Internet users seeking to
purchase Complainant’s products and services may instead purchase these same
products and services from Complainant’s competitors based on the third-party
links displayed on the website resolving from Respondent’s disputed domain
name. The Panel finds that Respondent’s
use of the disputed domain name constitutes a disruption of Complainant’s
business and is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See
Respondent is using the disptued domain name to intentionally redirect Internet users seeking Complainant’s products and services to Respondent’s resolving website. Respondent’s website resolving from the confusingly similar disputed domain name displays various links to Complainant’s competitors in the insurance industry. The Panel presumes that Respondent profits from the receipt of click-through fees based on the displayed third-party links. The Panel finds that Respondent’s use of the disputed domain name for Respondent’s commercial gain is further evidence of bad faith pursuant to 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will.”).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <statefarmapproved.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 4, 2010
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