national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Rampe Purda

Claim Number: FA1011001357146

 

PARTIES

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 Rampe Purda (“Respondent”), Finland.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <statefarmiphone.com> and <statefarmpocketagent.com> registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2010.  The Complaint was submitted in both English and Finnish.

 

On November 8, 2010, Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <statefarmiphone.com> and <statefarmpocketagent.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com and that Respondent is the current registrant of the names.  Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.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 November 12, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of December 2, 2010 by which Respondent could file a Response to the Finnish language Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@statefarmiphone.com and postmaster@statefarmpocketagent.com by e-mail.  Also on November 12, 2010, the Finnish language 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 the Honorable Charles K. McCotter, Jr. (Ret.) 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <statefarmiphone.com> and <statefarmpocketagent.com> domain names are confusingly similar to Complainant’s STATE FARM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <statefarmiphone.com> or <statefarmpocketagent.com> domain names.

 

3.      Respondent registered and used the <statefarmiphone.com> and <statefarmpocketagent.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, owns the exclusive rights to its STATE FARM mark which it uses in connection with its insurance and financial services business.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996).

 

Respondent, Rampe Purda, allegedly registered the disputed domains on July 8, 2010.  The disputed domains both resolve to a webpage featuring a search engine, as well as, third-party links to Complainant’s competitors.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established rights in the STATE FARM mark.  The Panel finds that registration with a governmental trademark authority is sufficient to establish rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Complainant holds multiple trademark registrations with the USPTO for its STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996).  Therefore, the Panel finds Complainant has established rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <statefarmiphone.com> and <statefarmpocketagent.com> domain names are confusingly similar to Complainant’s STATE FARM mark.  The disputed domain names both contain Complainant’s entire mark, removing the space between the two words, both add generic terms (“iphone” and “pocket agent”), and add the generic top-level domain (“gTLD”) “.com.”  Previous panels have found that the removal of spaces and the addition of a gTLD are insufficient in distinguishing a disputed domain from a complainant’s mark.  Earlier panels have also asserted that adding a generic term does not make a disputed domain significantly distinct from a complainant’s mark. 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 Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).  Therefore, the Panel finds Respondent’s <statefarmiphone.com> and <statefarmpocketagent.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <statefarmiphone.com> and <statefarmpocketagent.com> domain names.  Earlier panels have found that a complainant must first make a prima facie case and then the burden shifts to the respondent to show that they have rights or legitimate interests in a mark pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant makes a prima facie case.  Due to Respondent’s failure to respond to the complaint, the Panel may assume that Respondent lacks rights or legitimate interests in the <statefarmiphone.com> and <statefarmpocketagent.com> domain names. 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.”).  Nevertheless, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant alleges that Respondent has never been authorized to use the STATE FARM mark.  The WHOIS information identifies the domain name registrants as “Rampe Purda.”  There is no other evidence in the record to indicate that Respondent is commonly known by either of the disputed domain names.  Therefore, the Panel finds that Respondent has not sufficiently established rights or legitimate interests in the <statefarmiphone.com> or <statefarmpocketagent.com> domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).

 

Respondent uses the disputed domain names to display third-party, commercial links which are in competition with Complainant’s business.  The Panel finds that this does 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 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)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent uses the <statefarmiphone.com> and <statefarmpocketagent.com> domain names to direct Internet users to websites displaying links to Complainant’s competitors.  The Panel finds that this competing use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).

 

Internet users are likely to become confused as to Complainant’s affiliation with Respondent’s resolving websites, as the domain names are confusingly similar to Complainant’s STATE FARM mark.  Complainant contends that Respondent likely profits from this confusion, when Internet users click-through the links on the disputed domains.  The Panel finds that Respondent’s creation of confusion in an attempt to commercially gain is in bad faith pursuant to 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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

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

 

Accordingly, it is Ordered that the <statefarmiphone.com> and <statefarmpocketagent.com> domain names be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  December 20, 2010

 

 

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