State Farm Mutual Automobile Insurance Company v. Thad Shirley
Claim Number: FA1012001361424
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 Thad Shirley (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmautoandhome.com> and <statefarmhomeandauto.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2010; the National Arbitration Forum received payment on December 2, 2010.
On December 2, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoandhome.com> and <statefarmhomeandauto.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 December 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@statefarmautoandhome.com and postmaster@statefarmhomeandauto.com. Also on December 3, 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.
A timely Response was received and determined to be complete on December 22, 2010.
A timely Additional Submission was received from Complainant on December 23, 2010.
On December 27, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it has been doing business under the name “State Farm” since 1930. In 1999 it opened a federally chartered bank known as State Farm Bank. Complainant is engaged in both the insurance and financial services industry. It holds registered trademarks for STATE FARM and STATE FARM INSURANCE.
Complainant states the domain names in dispute are confusingly similar to its STATE FARM mark. Complainant states the Respondent is not commonly known by the domain names and has not been authorized to use Complainant’s STATE FARM mark. Complainant contends that the domain names have been registered and used in bad faith. The domain names contain links to other websites, some of which offer products and services in competition with Complainant.
B. Respondent
Respondent states that he has no control over what links or advertisements are placed on the resolving website. Respondent owns an independent insurance agency and states that the domain names will never resolve to the website he maintains. He intends to use the domain names to create a “neutral and unbiased discussion forum for the insurance industry.” In the future he states that the domain names will not resolve to sites that offer goods or services.
C. Complainant’s Additional Submission
Complainant has submitted an additional submission wherein Complainant states that Respondent’s characterization of his plans for the domain names as analogous to “gripe sites” is incorrect. Complainant states that by adding generic terms to the Complainant’s mark with obvious connections to Complainant’s business, Internet users will most certainly be confused regarding the connection between the resolving website and Complainant.
The Panel finds that Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996). Respondent registered the disputed domain names in August 2010.
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."
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.
The Panel finds that Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996). Trademark registrations with a federal trademark authority are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Accordingly, the Panel find that Complainant has established rights in its STATE FARM mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <statefarmautoandhome.com> and <statefarmhomeandauto.com> domain names are confusingly similar to Complainant’s STATE FARM mark. The disputed domain names both contain Complainant’s entire STATE FARM mark, remove the space in between the two words, add generic terms to the mark (“auto and home” and “home and auto”) and add the generic top-level domain (“gTLD”) “.com.” The removal of spaces from a mark and the addition of a gTLD fail to adequately distinguish a disputed domain from a complainant’s mark. The addition of generic terms to a mark can render a disputed domain name confusingly similar to the mark, particularly where the generic terms are related to the complaining party’s business. See American 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 Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds Respondent’s statefarmautoandhome.com> and <statefarmhomeandauto.com> domain names are confusingly similar to Complainant’s STATE FARM mark under a Policy ¶ 4(a)(i) analysis.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
As a result of Respondent’s failure to respond to the Complaint, however, the Panel may infer that Complainant’s allegations are true and that Respondent possesses no rights and legitimate interests in the disputed domain name. See American 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.”); 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.”). In the interest of making a complete determination on Respondent’s rights and legitimate interests, however, the Panel elects to consider the evidence presented according to Policy ¶ 4(c) factors.
Complainant argues that Respondent is not commonly known by either the <statefarmautoandhome.com> or <statefarmhomeandauto.com> domain names. The WHOIS information identifies the domain name registrant as “Thad Shirley.” The Panel agrees with Complainant that Respondent has not provided evidence that he is commonly known by either of the disputed domain names. Further, the Panel finds no evidence to contradict the Complainant’s assertion that Respondent is not authorized to use the STATE FARM mark. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests pursuant 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 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).
Respondent is using the disputed domain names to resolve to a parked website which contains third-party, commercial links that compete with Complainant’s business. Respondent’s use of the disputed domain names 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 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)); see also 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).
Although Respondent claims that the disputed domain names are parked by <godaddy.com> and that Respondent does not have control over the content displayed on the resolving website, Respondent, as the registrant of the disputed domain names, is ultimately responsible for the use of said domains. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent. [The] respondent has given those service providers permission to use the Disputed Domains . . . . [The] respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model that they employ . . . . The key fact here is that [the] respondent, in collaboration with the domain parking service providers, is exploiting [the] complainant's goodwill.”).
Complainant claims that Respondent attempts to generate competing business by “parking” the <statefarmautoandhome.com> and <statefarmhomeandauto.com> domain names, and featuring third-party links on each site. Previous panels have found that the display of competing links at a disputed domain name constitutes a disruption of the complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also 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 Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent’s use of the disputed domain names is an attempt to confuse Internet users who think they are receiving official information on Complainant’s business. Instead, the disputed domain names resolve to a website that displays links which compete with Complainant and are likely to generate competing business. The Panel finds that this use of the disputed domain names constitutes bad faith registration and use pursuant 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)).
Although Respondent contends that the disputed domain names are parked by GoDaddy.com, the Panel finds that the content of the resolving website is ultimately Respondent’s responsibility pursuant to Policy ¶ 4(a)(iii). See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmautoandhome.com> and <statefarmhomeandauto.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 4, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page