State Farm Mutual Automobile Insurance Company v. Chicago Board Up c/o Office Board Up
Claim Number: FA 1356250
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Smith of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Chicago Board Up c/o Office Board Up (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsuranceclaimsadjusting.com>, registered with Omnis Network, LLC.
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 November 3, 2010; the National Arbitration Forum received payment on November 3, 2010.
On November 8, 2010, Omnis Network, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarminsuranceclaimsadjusting.com> domain name is/are registered with Omnis Network, LLC and that Respondent is the current registrant of the names. Omnis Network, LLC has verified that Respondent is bound by the Omnis Network, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@statefarminsuranceclaimsadjusting.com. Also on November 12, 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 December 7, 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <statefarminsuranceclaimsadjusting.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarminsuranceclaimsadjusting.com> domain name.
3. Respondent registered and used the <statefarminsuranceclaimsadjusting.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, offers services in both the insurance and finance industry under the STATE FARM mark. The STATE FARM mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent, Chicago Board Up, registered the disputed domain name <statefarminsuranceclaimsadjusting.com> on October 18, 2010. The disputed domain name resolves to a page that redirects viewers to another website that advertises a third-party’s insurance adjusting service.
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 alleges it has adequate rights to pursue this claim. Noting Complainant’s registration of the STATE FARM mark with the USPTO, the Panel agrees. Previous panels have held that registration of a mark with the USPTO demonstrates adequate rights in a mark to pursue a domain name transfer claim. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Therefore, Pursuant to Policy ¶ 4(a)(i), the Panel finds that Complainant has established sufficient rights in the STATE FARM mark.
Complainant further contends that Respondent’s <statefarminsuranceclaimsadjusting.com> domain name is confusingly similar to its STATE FARM mark. The Panel notes the differences between the mark and the domain name and finds that the domain name fails to distinguish itself from Complainant’s mark and is therefore confusingly similar. Respondent has merely omitted the space in the mark and added the descriptive terms “insurance,” “claims,” and “adjusting.” These terms describe Complainant’s business. Previous panels have found that the addition of descriptive terms and a generic-top-level domain (“gTLD”) to a preexisting mark render the domain name confusingly similar to the preexisting mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Respondent’s omission of the space is irrelevant to the confusingly similar analysis. Spaces are not reproduceable in a domain name and therefore they are not considered. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”) Therefore, the Panel finds that the <statefarminsuranceclaimsadjusting.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to ¶ 4(a)(i).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <statefarminsuranceclaimsadjusting.com> domain name. Once Complainant makes a prima facie case in support of its contentions, 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 name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant contends that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). The WHOIS information of the disputed domain name indicates that Complainant is known as “Chicago Board Up,” and not any version of the disputed domain name. Complainant also asserts that it has not given any permission to Respondent to register or use its mark in any context. Given that Respondent has not responded to these allegations the evidence weighs heavily in favor of finding that Respondent is not commonly known by the disputed domain name. Previous panels have found just so on similar evidence. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); 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). The Panel views the evidence similarly and therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s use of the website lacks a bona fide offering of goods or services and is not a legitimate noncommercial or fair use. Respondent’s website immediately redirects users to another page that advertises for an insurance adjusting service not sponsored or affiliated with Complainant. The website offers an insurance adjusting service that operates directly adverse to Complainant. Previous panels have held that disputed domain names lack bona fide offerings and noncommercial or fair uses when the domain names show an intent to redirect Internet users to a website of the respondent. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino). The Panel finds the use of the disputed domain name does in fact divert Internet uses and therefore the Panel finds that the disputed domain name has no bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the disputed domain name is a disrupting use pursuant to Policy ¶ 4(b)(iii). Respondent’s website directs Internet users to a website that promotes a service directly opposed to Complainant. Previous panels have found that any party directly opposed to another is a competitor. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). This leads to the fact that Respondent is directing Internet users seeking Complainant to its own website that competes with Complainant. Previous panels have found that redirecting Internet users to a competitor is a disrupting use pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
The Panel also finds that Respondent is using the disputed domain name to create confusion regarding the affiliation of the website to attract Internet users for commercial gain. Respondent intends to attract Internet users seeking Complainant by creating confusion regarding the affiliation or sponsorship of its website. This, in turn, will benefit Respondent through increased traffic on the website which will increase sales. Previous panels have found this use of a domain name to indicate bad faith Pursuant to ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel finds that Respondent is intentionally using a confusingly similar domain name to create confusion regarding sponsorship or affiliation to attract Internet users for profit. Pursuant to Policy ¶ 4(b)(iv) this is an indication of bad faith registration and use.
The Panel finds that Complainant has met the requirements of 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 <statefarminsuranceclaimsadjusting.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 16, 2010
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