NATIONAL ARBITRATION FORUM

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. George Hanos

Claim Number: FA1005001325197

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company, (“Complainant”) represented by Debra J. Monke of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is George Hanos (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>, registered with MELBOURNE IT LTD, GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically May 18, 2010; the Forum received a hard copy of the Complaint May 18, 2010.

 

On May 18, 2010; May 19, 2010, MELBOURNE IT LTD, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names are registered with MELBOURNE IT LTD, GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  MELBOURNE IT LTD, GoDaddy.com, Inc. verified that Respondent is bound by the MELBOURNE IT LTD, GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 15, 2010, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 17, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant makes the following allegation in this proceeding:

 

1.      The domain names that Respondent registered, <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>, are confusingly similar to Complainant’s STATE FARM mark.

 

2.      Respondent has no rights to or legitimate interests in the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names.

 

3.      Respondent registered and used the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, offers auto, life, and home insurance products and services.  Complainant has been operating under the name “State Farm” since 1930.  Complainant holds numerous trademark registrations of the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996).

 

Respondent, George Hanos, registered the disputed <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names October 22, 2009.  The <mystatefarminsurance.us> and <statefarmauto.us> domain names resolve to parked websites.  These sites provide links to third-party websites, some of which provide insurance products and services that directly compete with Complainant’s business.  The <mystatefarmagent.us> domain name resolves to a website that states it is under construction. 

 

On December 30, 2010, Respondent telephoned Complainant and requested $150.00 for the disputed domain names.  On January 12, 2010, Complainant replied to Respondent’s offer via mail, stating it would reimburse Respondent $150.00 in exchange for Respondent’s signed agreement that he would not register any other domain names using Complainant’s trademarks.  Complainant did not receive a response from Respondent.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical to and/or Confusingly Similar

 

Complainant asserts rights in the STATE FARM mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996).  The Panel finds that these registrations establish Complainant’s rights in the mark under Policy ¶ (4)(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 [UDRP] Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under [UDRP] Policy ¶ 4(a)(i)).

 

 

Complainant urges that Respondent’s <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names are confusingly similar to its STATE FARM mark.  Respondent fully incorporates Complainant’s mark in each of the disputed domain names.  Respondent also includes the generic terms “my,” “agent,” and “auto” and the descriptive term “insurance,” which describes Complainant’s industry, in the disputed domain names.  The Panel finds that these additional terms do not create domain names that are distinguished from Complainant’s mark.  Furthermore, the Panel finds that the addition of the country code top-level domain (“ccTLD”) “.us” does not negate the similarity between Complainant’s mark and the disputed domain names.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). 

 

Therefore, the Panel finds that the disputed domain names <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>  are confusingly similar to Complainant’s STATE FARM mark.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant must first show that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  After Complainant makes this prima facie case, the burden of proof shifts to Respondent to demonstrate it has rights or legitimate interests.  Prior panels have interpreted Respondent’s failure to submit a Response as evidence of Respondent’s lack of rights or legitimate interests.  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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Despite Respondent’s failure to submit a response, the Panel still analyzes the record to determine if the evidence before the Panel suggests that Respondent does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

No evidence in the record suggests that Respondent owns any service marks or trademarks that reflect the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests under a Policy ¶ 4(c)(i) analysis.  See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to [UDRP] Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).

 

Complainant relates as well that Respondent is not associated with, affiliated with, or sponsored by Complainant.  Complainant also urges that it has not given Respondent permission to use its mark in a domain name.  Furthermore, the WHOIS information lists the registrant of the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names as “George Hanos,” indicating that Respondent is not commonly known by the disputed domain names.  Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(iii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant provides evidence that the <mystatefarminsurance.us> and <statefarmauto.us> domain names resolve to parked websites.  Complainant alleges that these sites provide links to third-party websites, some of which provide insurance products and directly compete with Complainant’s business.  The Panel finds that Respondent’s use of confusingly similar domain names for this purpose does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to [UDRP] Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Next, Complainant asserts the <mystatefarmagent.us> domain name resolves to a website that states it is under construction.  The Panel finds that Respondent’s failure to make active use of the disputed domain name suggests that Respondent does not use the  <mystatefarmagent.us> domain name for a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under [UDRP] Policy ¶ 4(a)(ii)).

 

In addition, Respondent offered to sell the disputed domain names to Complainant for $150.00.  The Panel finds this offer provides further evidence that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See 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)); Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). 

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names containing Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant also alleges that Respondent registered and used the disputed domain names in bad faith.  The Panel finds that Respondent’s attempt to sell the disputed domain names to Complainant is evidence of and supports findings of bad faith registration and use under 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 [UDRP] Policy ¶ 4(b)(i).”); 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 argues that the <mystatefarminsurance.us> and <statefarmauto.us> domain names divert Internet consumers seeking Complainant’s business to Respondent’s websites.  The Panel finds that Respondent’s use of the disputed domain names, <mystatefarminsurance.us> and <statefarmauto.us>, to resolve to websites that feature links to third-party websites that compete with Complainant’s business disrupts Complainant’s business and also supports findings of bad faith registration and use in bad faith under Policy ¶ 4(b)(iii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to [UDRP] Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Additionally, the Panel finds that Internet users searching for Complainant’s products may become confused as to Complainant’s sponsorship of or affiliation with the disputed <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names.  Therefore, the Panel finds this to be additional evidence to support findings of Respondent’s registration and use in bad faith under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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 [UDRP] Policy ¶ 4(b)(iv)).

 

The Panel also finds that Respondent’s failure to make active use of the disputed <mystatefarmagent.us> domain name supports additional findings of bad faith registration and use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of [UDRP] ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel finds that Respondent registered and used or passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN  Policy 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: July 1, 2010.

 

 

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