State Farm Mutual Automobile Insurance Company v. Lance Marcus
Claim Number: FA1012001365319
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forrest of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Lance Marcus (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmhomeloans.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2010; the National Arbitration Forum received payment on December 29, 2010.
On January 5, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmhomeloans.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2011 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@statefarmhomeloans.com. Also on January 5, 2011, 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 January 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a national insurance and financial services provider that has been doing business under the STATE FARM service mark since 1930.
Complainant owns federal registrations with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,979,585, issued June 11, 1996) for its STATE FARM service mark.
Respondent registered the disputed domain name on October 17, 2010.
The <statefarmhomeloans.com> domain name resolves to a site offering links to third party sites, some of which compete directly with Complainant’s business.
Respondent’s <statefarmhomeloans.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent is not commonly known by the <statefarmhomeloans.com> domain name.
Complainant has not authorized Respondent to register the domain name or to use the State Farm service mark for Respondent’s business purposes.
Respondent has attempted to sell the contested domain name to Complainant.
Respondent does not have any rights to or legitimate interests in the domain name <statefarmhomeloans.com>.
Respondent registered and uses the disputed <statefarmhomeloans.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the STATE FARM service mark by registering that mark with the USPTO. See, for example: Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As … [complainant’s] mark is registered with the USPTO, complainant has met the requirements of Policy ¶ 4(a)(i).
See also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <statefarmhomeloans.com> domain name is confusingly similar to Complainant’s STATE FARM service mark. The disputed domain name incorporates the entire mark while merely removing a space, and adding the generic terms “home” and “loans,” and the generic top-level domain (“gTLD”) “.com.” These changes fail to differentiate the <statefarmhomeloans.com> domain name sufficiently from Complainant’s mark under Policy ¶ 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire mark and merely added two terms to it); see also 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.
See also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel therefore finds that the requirements of Policy ¶ 4(a)(i) have been met.
Once Complainant has made out a prima facie case under this head of the Policy, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has met its burden by making out a prima facie case against Respondent on the point of Respondent’s rights to or legitimate interests in the contested domain name. Because Respondent has failed to submit a Response to the Complaint filed in this proceeding, we may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name. See Am. 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.
However, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <statefarmhomeloans.com> domain name, and that Complainant has not authorized Respondent to register the domain name or to use the State Farm service mark for Respondent’s business purposes. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Lance Marcus,” which does not resemble the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <statefarmhomeloans.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
Complainant further contends, without objection from Respondent, that the contested <statefarmhomeloans.com> domain name resolves to a website offering links to third party sites, some of which compete directly with Complainant’s business. In the circumstances here presented, we may comfortably presume that Respondent receives click-through or similar fees for the visits of Internet users to the websites resolving from the featured links. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that a respondent’s commercial use of a contested domain name suggests that that respondent lacks rights to or legitimate interests in the domain).
Finally under this head of the Policy, there is no dispute as to Complainant’s further allegation that Respondent has attempted to sell the contested domain to Complainant. Respondent’s attempt to sell the disputed domain name further demonstrates that it does not have rights to or legitimate interests in the <statefarmhomeloans.com> domain. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent’s willingness to sell a contested domain name provided additional evidence that that respondent had no rights to or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to a complainant suggests that that respondent had no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s attempts to sell the <statefarmhomeloans.com> domain name to Complainant constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that a respondent's offer to sell the domain name there at issue to a complainant was evidence of bad faith).
Respondent’s use of the <statefarmhomeloans.com> domain name in the manner alleged in the Complaint disrupts Complainant’s business, and is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a disputed domain pursuant to Policy ¶ 4(b)(iii) by using it to operate a commercial search engine with links to the products of both a complainant and that complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
Respondent presumably receives click-through fees for operating the contested <statefarmhomeloans.com> domain name to redirect Internet users to the links featured on the resolving website. Respondent’s use of the disputed domain name in this manner for its own commercial gain constitutes evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a disputed domain name which was confusingly similar to a complainant’s mark by using it to offer links to third-party websites that featured services similar to those offered by that complainant).
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarmhomeloans.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 28, 2011
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