State Farm Mutual Automobile Insurance Company v. HIG Insurance c/o Star Herbig
Claim Number: FA1005001326331
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 <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org>, registered with GoDaddy.com, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 25, 2010.
On May 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@droppedbystatefarm.info, postmaster@droppedbystatefarm.net, and postmaster@droppedbystatefarm.org. Also on June 1, 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 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate interests in the <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names.
3. Respondent registered and used the <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, established trademark rights due to its registration of the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996) and multiple other marks with STATE FARM incorporated in them, dating back to 1957 (e.g. STATE FARM INSURANCE COMPANIES, USPTO Reg. No. 645,890 issued May 21, 1957). Complainant uses the mark in connection with providing insurance and financial service products, and has a virtual presence to offer information about its business on its official website resolving from the <statefarm.com> domain name, which was registered May 24, 1995.
Respondent, HIG Insurance c/o Star Herbig, registered the <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names February 23, 2009. The disputed domain names resolve to parked websites that display general advertisements and include hyperlinks to third-party websites that compete with Complainant’s services under its mark.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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 that it has rights in the STATE FARM
mark via its trademark registration with the USPTO (Reg. No. 1,979,585 issued
June 11, 1996). The Panel finds that
Complainant established its rights pursuant to Policy ¶ 4(a)(i)
in the STATE FARM mark through its trademark registration of the same with the
USPTO. See
Complainant alleges that Respondent’s <droppedbystatefarm.info>,
<droppedbystatefarm.net> and <droppedbystatefarm.org>
domain names are confusingly similar to Complainant’s STATE FARM mark. Complainant argues that Respondent’s disputed
domain names remove the space between the terms of the mark, add the generic
terms “dropped by,” and add generic top-level domain names (“.info,” “.net,”
“.org”). The Panel finds that these
alterations do not render Respondent’s disputed domain names distinct from Complainant’s mark
under Policy ¶ 4(a)(i). See Am.
Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007)
(finding that “spaces are impermissible and a generic top-level domain, such as
‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is
required in domain names. Therefore, the
panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is
confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also U.S. News & World Report, Inc.
v. Zhongqi, FA 917070 (Nat. Arb.
Forum Apr. 9, 2007) (“Elimination of punctuation
and the space between the words of Complainant’s mark, as well as the addition
of a gTLD does not sufficiently distinguish the disputed domain name from the
mark pursuant to Policy ¶ 4(a)(i).”); see
also Quixtar Inv., Inc. v.
Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the
domain name <quixtar-sign-up.com> incorporates in its entirety the
complainant’s distinctive mark, QUIXTAR, the domain name is confusingly
similar); see also Novell, Inc. v. Taeho
Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the
<novellsolutions.com> domain name confusingly similar to the NOVELL mark
despite the addition of the descriptive term “solutions” because even though
“the word ‘solutions’ is descriptive when used for software, Respondent has
used this word paired with Complainant's trademark NOVELL”); see also Microsoft Corp. v. Zournas, FA
1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the
Panel finds that … the addition of a gTLD is a necessary addition in the
creation of any domain name and therefore an indistinguishing characteristic
under Policy ¶ 4(a)(i).“);
see also Trip Network Inc. v. Alviera,
FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a
gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, this Panel finds that Respondent’s <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names are confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case in support of these allegations, the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case in support of its Complaint, shifting the burden to Respondent. Given Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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 <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names list the registrant as “HIG Insurance c/o Star Herbig.” Complainant asserts that Respondent is not commonly known by the dispute domain names, and that it has not given authorization to Respondent for use of the STATE FARM mark. The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to 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 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).
Complainant further alleges that Respondent’s disputed domain names resolve to websites that display general advertisements and hyperlinks to third-party websites, including websites that offer insurance services in competition with Complainant. Complainant further alleges that Respondent profits from these hyperlinks by receiving click-through fees when Internet users, seeking Complainant’s business, click a link on the website resolving from the disputed domain names. The Panel finds that Respondent’s use of the <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant contends that the websites resolving from Respondent’s disputed domain names are parked sites and, as such, are not in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and that they are not in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest); 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 Respondent has no rights or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the <droppedbystatefarm.info>,
<droppedbystatefarm.net> and <droppedbystatefarm.org>
domain names to display hyperlinks to Complainant’s competitors creates a
diversion of Complainant’s business under its mark. Complainant argues that Internet users seeking
the services of Complainant under its mark may be diverted to Complainant’s
competitors, and that this constitutes bad faith registration and use of the
disputed domain names by Respondent. The
Panel finds that Respondent’s use of the
<droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org>
domain names diverts Complainant’s business to its competitors, which supports
findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v.
Complainant also urges that Internet users, seeking the
services of Complainant under its STATE FARM mark, may become confused by the
sponsorship or affiliation of Complainant to the websites resolving from
Respondent’s <droppedbystatefarm.info>,
<droppedbystatefarm.net> and <droppedbystatefarm.org>
domain names. Complainant contends that
Respondent receives click-through fees when these confused Internet users click
on one of the hyperlinks to a third-party website. The Panel is permitted in such circumstances
to make an inference that Respondent gains commercially from the confusion of
Internet users seeking Complainant’s services, conduct that also supports
findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
Complainant lastly notes that Respondent’s disputed domain
names resolve to parked websites.
Complainant further alleges that this use is additional evidence of bad
faith registration and use of the disputed domain names by Respondent. The Panel finds that Respondent has control
over the content of the website resolving from its disputed domain names, and
using them for parked websites supports findings of bad faith registration and
use of the <droppedbystatefarm.info>,
<droppedbystatefarm.net> and <droppedbystatefarm.org>
domain names pursuant to Policy ¶
4(a)(iii). See St. Farm Mutual Auto. Insr.
The Panel finds that Respondent registered and used the disputed
domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <droppedbystatefarm.info>, <droppedbystatefarm.net> and <droppedbystatefarm.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 1, 2010.
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