State Farm Mutual Automobile Insurance Company v. MIC c/o Syed Hussain
Claim Number: FA1004001322235
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 <statefarm2save.com>, registered with Netfirms, 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 April 30, 2010.
On April 30, 2010, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarm2save.com> domain name is registered with Netfirms, Inc. and that Respondent is the current registrant of the name. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 May 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@statefarm2save.com. Also on May 4, 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 27, 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 (the "Rules") "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 <statefarm2save.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <statefarm2save.com> domain name.
3. Respondent registered and used the <statefarm2save.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, holds rights in its STATE FARM INSURANCE mark via its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,125,010 issued September 11, 1979). Complainant uses the mark in connection with insurance and financial services as well as offering services related to the mark online through its official website resolving from the <statefarm.com> domain name.
Respondent, MIC c/o Syed Hussain, registered the <statefarm2save.com> domain name on May 24, 1995. The disputed domain name resolves to a parked website which contains links to third-party websites unrelated to Complainant or Complainant’s business. Additionally, Respondent made a specific offer to sell the disputed domain name to Complainant for the amount of $1,250 USD.
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 its rights in the STATE FARM INSURANCE
mark via its trademark registration with the USPTO (Reg. No. 1,125,010 issued
September 11, 1979). The Panel finds this registration with the USPTO is
sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See Reebok Int’l Ltd. v.
Complainant argues that Respondent’s <statefarm2save.com> domain name is
confusingly similar to the STATE FARM INSURANCE mark. Complainant contends that
the disputed domain name removes a term of the mark (“insurance”), removes the
space between the terms of the mark, adds a generic term (“2save”), and adds
the generic top-level domain (“gTLD”) (“.com”). The Panel finds these
alternations are not sufficient to distinguish Respondent’s disputed domain
name from Complainant’s mark. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007)
(holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO
PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”);
see also Oki Data Am. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com>
domain name is confusingly similar to the complainant’s OKIDATA mark because
“…the 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 Napster, Inc. v. Mededovic,
D2005-1263 (WIPO Jan. 17, 2006) (finding confusing similarity where “[t]he
disputed domain name comprises the highly distinctive NAPSTER trademark itself,
combined with the suffix “
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name. The Panel determines Complainant has established a prima facie case under Policy ¶ 4(a)(ii), shifting the burden to Respondent to refute Complainant’s arguments under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant 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 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)). The Panel may infer that Respondent’s lack of response is evidence of Respondent’s having no rights or legitimate interest in the <statefarm2save.com> domain name. The Panel may instead choose to review the evidence under Policy ¶ 4(c). See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
The WHOIS information for the <statefarm2save.com> domain name lists the registrant as
“MIC c/o Syed Hussain” which does not dispell
Complaint’s contention that Respondent is not commonly known by the disputed
domain name. Complainant also contends that it has not licensed or authorized
Respondent to use the STATE FARM INSURANCE mark. The Panel finds that Respondent is not commonly known by the <statefarm2save.com>
domain name under Policy ¶
4(c)(ii). See Foot Locker Retail,
Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of
Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information
reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not
‘commonly known by’ any of the disputed domain names prior to their
registration, and concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”); see also Oakley, Inc. v. Watson, D2000-1658 (WIPO
May 3, 2001) (“It is clear that the value in the Oakley name has been created
by the commercial use and registrations of the Complainant and it is also
clear . . . that Respondent is taking advantage of the
value created by the Complainant.”).
Respondent’s disputed domain name resolves to a website that
offers links to third-party websites unrelated to Complainant’s services. The
Panel finds Respondent’s use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Constellation Wines
Complainant asserts that Respondent made a specific offer to sell the disputed domain name, in the amount of $1,250 USD. This amount is significantly higher than the presumed cost to register the <statefarm2save.com> domain name. The Panel finds this offer to sell the disputed domain name is additional evidence that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent made a specific offer to sell the disputed domain name to Complainant for significantly higher than Respondent’s out-of-pocket costs. The Panel finds this offer to sell the <statefarm2save.com> domain name qualifies as bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Complainant contends that Respondent’s disputed domain name resolves to a website that offers links to third-party websites unrelated to Complainant’s services. Complainant argues that Respondent likely profits from the confusing similarity between its disputed domain name and Complainant’s mark by receiving click-through fees from the displayed links. The Panel infers that Respondent’s use of the disputed domain name is for commercial gain and, therefore, qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 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)).
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 <statefarm2save.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 2, 2010
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