State Farm Mutual Automobile Insurance Company v. George Hanos
Claim Number: FA1005001324973
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
NAMES
The domain names at issue are <mystatefarmbank.com>, <mystatefarminsurance.net>, <ourstatefarmagent.com> and <statefarmbankdirect.com>, registered with GoDaddy.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2010.
On May 17, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <mystatefarmbank.com>, <mystatefarminsurance.net>, <ourstatefarmagent.com> and <statefarmbankdirect.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@mystatefarmbank.com, postmaster@mystatefarminsurance.net, postmaster@ourstatefarmagent.com and postmaster@statefarmbankdirect.com by e-mail. Also on May 18, 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 June 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mystatefarmbank.com> and <statefarmbankdirect.com> domain names are confusingly similar to Complainant’s STATE FARM BANK mark.
Respondent’s <mystatefarminsurance.net>
domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
Respondent’s <ourstatefarmagent.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <mystatefarmbank.com>, <mystatefarminsurance.net>, <ourstatefarmagent.com> and <statefarmbankdirect.com> domain names.
3. Respondent registered and used the <mystatefarmbank.com>, <mystatefarminsurance.net>, <ourstatefarmagent.com> and <statefarmbankdirect.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, has been a nationwide provider of insurance products since 1930. In 1999 Complainant opened a Federally Chartered Bank and since that time has been conducting business in both the insurance and financial services industries. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its STATE FARM marks including: STATE FARM INSURANCE (e.g., Reg. No. 1,125,010 issued September 11, 1979); STATE FARM BANK (e.g., Reg. No. 2,319,867 issued February 15, 2000); and STATE FARM (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent, George Hanos, registered the <mystatefarmbank.com>, <mystatefarminsurance.net>, <ourstatefarmagent.com> and <statefarmbankdirect.com> domain names on October 22, 2009. Respondent’s disputed domain names all resolve to a parked webpage located at third-party <godaddy.com>, and contain various third-party hyperlinks to insurance products and companies some of which are 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.
The Panel finds that Complainant has demonstrated rights in
its STATE FARM marks under Policy ¶ 4(a)(i) through its multiple trademark registrations
with the USPTO such as: STATE FARM INSURANCE (e.g., Reg. No. 1,125,010 issued September 11, 1979); STATE FARM
BANK (e.g., Reg. No. 2,319,867 issued
February 15, 2000); and STATE FARM (e.g.,
Reg. No. 1,979,585 issued June 11, 1996).
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 first contends that Respondent’s <mystatefarmbank.com> and <statefarmbankdirect.com> domain names are confusingly similar to Complainant’s STATE FARM BANK mark. Complainant argues that both domain names contain Complainant’s mark entirely with the addition of the prefix “my” or the generic term “direct,” as well as the generic top-level domain (“gTLD”) “.com.” Complainant argues that the changes made to its mark are not sufficient for the disputed domain names to be distinct from Complainant’s mark. The Panel agrees and finds that Respondent’s <mystatefarmbank.com> and <statefarmbankdirect.com> domain names are confusingly similar to Complainant’s STATE FARM BANK mark under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the complainant, and thus the respondent’s domain names are confusingly similar); 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.”).
Complainant next contends that Respondent’s <mystatefarminsurance.net> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark. Complainant argues that the domain name contains its mark in its entirety while including the prefix “my” and the gTLD “.net,” and that such changes do not distinguish the disupted domain name from Complainant’s mark. The Panel finds that Respondent’s <mystatefarminsurance.net> domain name is confusingly similar to Complanant’s STATE FARM INSURANCE mark under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Lastly, Complainant argues that Respondent’s <ourstatefarmagent.com> domain name is confusingly similar to Complainant’s STATE FARM mark because it contains Complainant’s mark entirely while adding the prefix “our” and the descriptive term “agent” with the gTLD “.com.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s STATE FARM mark for purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <mystatefarmbank.com>, <mystatefarminsurance.net>, <ourstatefarmagent.com> and <statefarmbankdirect.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to 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 names. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information, provided by Complainant, lists the
registrant of the domain names as “George Hanos.” Respondent fails to offer evidence
contradicting this information and showing Respondent is commonly known by the <mystatefarmbank.com>, <mystatefarminsurance.net>,
<ourstatefarmagent.com> and <statefarmbankdirect.com> domain
names.
There is no other evidence on record showing Respondent is commonly
known by the disputed domain names.
Complainant further asserts that Respondent is not authorized to use the
STATE FARM, STATE FARM BANK, or STATE FARM INSURANCE marks. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain names pursuant to Policy ¶
4(c)(ii). See 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); see
also Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding
that the respondent was not commonly known by the <thirteen.com> domain
name based on all evidence in the record, and the respondent did not counter
this argument in its response).
Complainant contends that Respondent is using the disputed domain name to resolve to a website parked with third-party <godaddy.com> that displays various third-party hyperlinks to competing insurance and financial services companies. Complainant argues that this type of use is not connected to a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain name to display third-party links to competing insurance and banking companies, presumably for profit, is 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant argues that Respondent’s use of the <mystatefarmbank.com>, <mystatefarminsurance.net>,
<ourstatefarmagent.com> and <statefarmbankdirect.com> domain
names to redirect Internet users to the businesses and websites of competing
insurance and banking companies creates a disruption in Complainant’s
business. Complainant contends that
Respondent registered the trademark infringing domain names to use
Complainant’s mark for its own profit by sending potential customers of
Complainant to Complainant’s competitors, and that such use is evidence of bad faith. The Panel agrees and finds that Respondent is
creating a disruption in Complainant’s business by diverting potential
customers of Complainant to competing businesses, and that such use is bad
faith 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
Complainant further alleges that Respondent has registered
and used the disputed domain names in order to intentionally attract Internet
users to the disputed domain names where Respondent receives click-through fees
for the links displayed thereon. The
Panel finds that Complainant has adequately shown that Respondent registered
and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv) where
Respondent is operating a commercial links page and is presumably profiting
from diverting Internet users to the competitors of Complainant. 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 Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar
domain name to display links to various third-party websites demonstrated bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that 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 <mystatefarmbank.com>, <mystatefarminsurance.net>, <ourstatefarmagent.com> and <statefarmbankdirect.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 24, 2010
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