State Farm Mutual Automobile Insurance Company v. Charles Bennett
Claim Number: FA1101001367878
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 Charles Bennett (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <askstatefarm.info>, 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 January 17, 2011; the National Arbitration Forum received payment on January 17, 2011.
On January 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <askstatefarm.info> 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 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 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@askstatefarm.info. Also on January 17, 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 February 10, 2011, 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.
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 <askstatefarm.info> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <askstatefarm.info> domain name.
3. Respondent registered and used the <askstatefarm.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and financial services industry. Complainant owns a trademark registration for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent, Charles Bennett, registered the <askstatefarm.info> domain name on December 23, 2010. The disputed domain name resolves to a website displaying numerous pay-per-click links for various products and companies, including companies that compete with Complainant’s financial services offerings.
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 owns a trademark registration for the STATE FARM mark with the USPTO (Reg. No. 1,979,585 issued June 11, 1996). The Panel finds that Complainant has sufficiently proven its rights in the STATE FARM mark by providing this evidence of its USPTO trademark registration. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <askstatefarm.info> domain name is confusingly similar to Complainant’s STATE FARM mark because the disputed domain name differs from the mark in only three minor ways: the addition of the generic term “ask,” the removal of the space between terms, and the attachment of the generic top-level domain (“gTLD”) “.info.” The Panel finds that adding a term such as “ask” to Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark). The Panel also finds the removing the space between the terms and attaching the gTLD is of no consequence to the confusingly similar analysis under Policy ¶ 4(a)(i). 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 Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). The Panel therefore finds that Respondent’s <askstatefarm.info> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In order to shift the burden of proving rights and legitimate interests to Respondent, Complainant must first present a prima facie case against Respondent pursuant to Policy ¶ 4(a)(ii). As the Panel finds that Complainant has put forth a sufficient case, the burden now lies with Respondent. Because Respondent has failed to respond to the Complaint it has not met its burden under Policy ¶ 4(a)(ii). The Panel infers that Respondent does not possess rights and legitimate interests in the disputed domain name and that Complainant’s allegations are true as stated. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). In the interest of fairness, however, the Panel elects to consider the evidence in light of the Policy ¶ 4(c) factors to determine whether a basis exists to find that Respondent has rights and legitimate interests.
Complainant contends it did not authorize Respondent to use Complainant’s mark or register the <askstatefarm.info> domain name. Complainant asserts that Respondent has never performed business under the disputed domain name, does not possess intellectual property rights in such a name, and does not have any contractual arrangement with Complainant allowing Respondent to use the mark or disputed domain name. Complainant further argues that Respondent is not an affiliate, subsidiary or independent contractor of Complainant. The WHOIS information for the disputed domain name lists the registrant as “Charles Bennett,” a name with no apparent connection to the disputed domain name. The Panel thus finds that Respondent is not commonly known by the <askstatefarm.info> domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant asserts that Respondent maintains a directory of pay-per-click links to various commercial products and businesses at the <askstatefarm.info> resolving website. The displayed pay-per-click advertisements include links to insurance companies that compete with Complainant. The Panel finds hosting a pay-per-click directory at the resolving website does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that many competing insurance and financial services providers are advertised at the <askstatefarm.info> domain name through featured pay-per-click links. By competing with Complainant and presumably diverting Complainant’s customers away from Complainant, the Panel finds that Respondent is disrupting Complainant’s business, which reveals bad faith registration and use according 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 American Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent registered the <askstatefarm.info> domain name in order to attract Internet users seeking information about Complainant and to create the impression that Respondent’s website would provide such information. Complainant argues that Respondent’s appropriation of the STATE FARM mark in the disputed domain name creates a likelihood of confusion with Complainant as to the source or affiliation of Respondent’s website. Respondent likely profits from this scheme by way of the pay-per-click fees generated from the links. The Panel accordingly finds that Respondent’s actions show bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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)).
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 <askstatefarm.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 23, 2011
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