State Farm Mutual Automobile Insurance Company v. William Simms
Claim Number: FA1005001326347
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 <statefarmtallahassee.com>, registered with GoDaddy.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2010.
On May 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmtallahassee.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 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@statefarmtallahassee.com. 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 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <statefarmtallahassee.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmtallahassee.com> domain name.
3. Respondent registered and used the <statefarmtallahassee.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally recognized company that provides insurance and financial services. Complainant owns a trademark registration for 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, William Simms, registered the <statefarmtallahassee.com> domain name on April 5, 2010. The disputed domain name resolves to a generic directory page advertising presumed pay-per-click links to providers of competing insurance services.
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 owns a trademark registration for the STATE FARM
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 proof of its rights in the STATE FARM mark under Policy ¶
4(a)(i). See Reebok Int’l Ltd. v.
Complainant alleges that Respondent’s <statefarmtallahassee.com> domain
name is confusingly similar to Complainant’s STATE FARM mark because the domain
name entirely appropriates Complainant’s mark, changing the mark only with the
deletion of the space between the words and the addition of the geographic term
“Tallahassee” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a geographic term
to Complainant’s mark is an insufficient modification to prevent confusing
similarity according to Policy ¶ 4(a)(i). See
Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(finding that the addition of geographic terms, such as “cancun” to the end of
the CHEAPTICKETS mark in the <cheapticketscancun.com>,
<cheapticketscancun.biz>, <cheapticketscancun.net>, and
<cheapticketscancun.org> domain names, does not overcome a finding of
confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it
is well established that a domain name consisting of a well-known mark,
combined with a geographically descriptive term or phrase, is confusingly
similar to the mark.”). The Panel also
finds that the deletion of the space and the addition of the gTLD “.com” are
irrelevant to a Policy ¶ 4(a)(i) analysis due to the requirements of domain
name formation. See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept.
5, 2002) (“[T]he absence of a space and the hyphen between the words of the
mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i)
identical analysis.”); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel therefore finds that Respondent’s <statefarmtallahassee.com> domain name is confusingly similar to
Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. As the Panel finds that Complainant has presented a sufficient prima facie case against Respondent in accord with the requirements of Policy ¶ 4(a)(ii), the burden now transfers to Respondent to demonstrate rights and legitimate interests in the disputed domain name. The Respondent, however, has failed to satisfy its burden because it has not presented a Response to the Complaint. The Panel may accordingly infer that Respondent lacks rights and legitimate interests in the disputed domain name and that Complainant’s allegations are true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel elects, however, to fully consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the <statefarmtallahassee.com> domain name. The WHOIS information for the disputed domain name supports Complainant’s contention as it lists the registrant of the disputed domain name as “William Simms.” The Panel finds, therefore, that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant argues that Respondent does not use the <statefarmtallahassee.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name redirects Internet users to a directory website listing presumed pay-per-click links to providers of insurance services in competition with Complainant. The Panel finds that maintaining such a pay-per-click website at the disputed domain name does not comport with Policy ¶ 4(c)(i) or ¶ 4(c)(iii) requiring a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <statefarmtallahassee.com> domain
name provides links to competing insurance services. Complainant argues that the similarity of
services offered by Complainant and at the disputed domain name is disruptive
to Complainant’s business because Internet users may associate Complainant’s
mark with the companies advertised on the website resolving from the disputed
domain name and be confused about affiliation between the companies. The Panel finds that advertising competing
service through pay-per-click links at the disputed domain name disrupts
Complainant’s business and shows bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see also Am. Airlines, Inc. v.
Complainant alleges that Respondent’s <statefarmtallahassee.com> domain
name uses Complainant’s mark in order to benefit from the fame and goodwill of
Complainant’s mark in the insurance and financial services industry. Complainant asserts that the links to
competing insurance services on the resolving website are pay-per-click links
that profit Respondent, especially when traffic to Respondent’s website is
increased as a result of Respondent’s appropriation of Complainant’s mark and
the subsequent confusion among Internet as to Complainant’s affiliation with
Respondent’s website. The Panel finds
that using Complainant’s mark to attract Complainant’s intending customers for
Respondent’s own personal financial gain demonstrates bad faith registration
and use according 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 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 Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <statefarmtallahassee.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 1, 2010
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