State Farm Mutual Automobile Insurance Company v. Rampe Purda
Claim Number: FA1101001366400
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Monke of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Rampe Purda (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsurancecomplaints.com>, registered with HebeiDomains.com.
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 January 7, 2011; the National Arbitration Forum received payment on January 7, 2011. The Complaint was submitted in both the Finnish and English languages.
On January 9, 2011, HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancecomplaints.com> domain name is registered with HebeiDomains.com and that Respondent is the current registrant of the name. HebeiDomains.com has verified that Respondent is bound by the HebeiDomains.com 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 10, 2011, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of January 31, 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@statefarminsurancecomplaints.com. Also on January 10, 2011, 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.
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.
On February 2, 2011, 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 <statefarminsurancecomplaints.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <statefarminsurancecomplaints.com> domain name.
3. Respondent registered and used the <statefarminsurancecomplaints.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is an international provider of insurance and financial services that is headquartered in the United States. Complainant owns numerous trademark registrations for its STATE FARM INSURANCE mark, including those with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,125,010 issued September 11, 1979).
Respondent, Rampe Purda, registered the <statefarminsurancecomplaints.com> domain name on October 13, 2010. Respondent’s disputed domain name redirects Internet users to a website for an insurance company that is in competition with Complainant.
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 asserts, and provides the Panel with evidence to show, that it owns rights in its STATE FARM INSURANCE mark under Policy ¶ 4(a)(i), through its numerous trademark registrations with the USPTO (e.g., Reg. No. 1,125,010 issued September 11, 1979). The Panel finds that such evidence is sufficient to satisfy the requirements of Policy ¶ 4(a)(i), and that Complainant has protectable rights in its STATE FARM INSURANCE mark. Further, the Panel notes that Complainant need not own or provide evidence of a trademark registration in the country of Respondent’s residence under the Policy. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <statefarminsurancecomplaints.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark because the domain name encompasses Complainant’s entire mark while adding the generic term “complaints” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Complainant has established that the disputed domain name registered by Respondent is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where the domain name contains the entire mark, absent the spaces between the terms of the mark, while adding a generic term and the gTLD “.com.” 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <statefarminsurancecomplaints.com> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Once the Complainant has produced a prima facie case the burden shifts to Respondent to show they do have a right or legitimate interest in the disputed domain name. 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 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has established a prima facie case. Due to the Respondent’s failure to respond to these proceedings the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <statefarminsurancecomplaints.com> domain name under Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its STATE FARM INSURANCE mark, and that Respondent is not commonly known as the <statefarminsurancecomplaints.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Rampe Purda,” which does not indicate that Respondent is commonly known as the disputed domain name. Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant contends that the disputed domain name automatically redirects Internet users to a competing insurance website located at <protect.com/auto_protection.php?CACP=ov.ain_c.dnt_s.tll_m.ain_do.statefarm>. Complainant argues that such use of a confusingly similar domain name does not create a bona fide offering of goods or services under the Policy, and that Respondent does not have rights or legitimate interests in the domain name for such use. The Panel agrees, and finds that Respondent’s use of the disputed domain name to re-direct Internet users to a competing insurance website is not 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed domain name to divert Internet users to a competing insurance business and website. Without the benefit of explanation from Respondent, the Panel infers that such use results in the disruption of Complainant’s online presence and business activities. The Panel further finds that such use of a confusingly similar domain name is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, the Panel presumes that Respondent receives commercial benefit from its diversionary scheme, and has attempted to attract Internet users to its website for such purpose by creating a likelihood of confusion between the domain name and Complainant’s mark. Therefore, the Panel finds that Respondent’s use of the domain name also violates Policy ¶ 4(b)(iv), and is further evidence of Respondent’s bad faith registration and use. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that 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 <statefarminsurancecomplaints.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 14, 2011
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