national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Kevin Gressley

Claim Number: FA1101001369241

 

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 Kevin Gressley (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmapparel.com>, registered with GoDaddy.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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 24, 2011.

 

On January 24, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <statefarmapparel.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the names.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 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@statefarmapparel.com.  Also on January 25, 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 17, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a global provider of financial products, including insurance.

 

Complainant owns registrations for its STATE FARM service mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,979,585, issued June 11, 1996). 

 

Complainant uses the STATE FARM mark to support its daily business functions.

 

Respondent registered the disputed domain name on July 16, 2010. 

 

Respondent’s domain name resolves to a site offering links to the websites of third parties, some of which are commercial competitors of Complainant. 

 

Respondent presumably receives click-through fees for each Internet user that visits its site and eventually arrives at one or another of the listed third party links. 

 

Respondent’s <statefarmapparel.com> domain name is confusingly similar to Complainant’s STATE FARM mark.

 

Respondent is not commonly known by the <statefarmapparel.com> domain name.

 

Complainant has not authorized Respondent to register the disputed domain name or to use the State Farm service mark for Respondent’s business purposes.

 

Respondent does not have any rights to or legitimate interests in the domain name <statefarmapparel.com>.

 

Respondent registered and uses the <statefarmapparel.com> domain name in bad faith.

 

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

 

FINDINGS

(1)  the domain name registered by Respondent is 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.

 

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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the STATE FARM service mark under Policy ¶ 4(a)(i) by registering that mark with a national trademark authority, the USPTO.  See, for example, Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):

Complainant has established rights in the … mark through registration of the mark with the USPTO.

 

See also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). 

 

Respondent’s <statefarmapparel.com> domain name is confusingly similar to Complainant’s STATE FARM mark.  The disputed domain name includes the entire mark, while merely removing the space between the terms of the mark, and adding the generic term “apparel” and the generic top-level domain (“gTLD”) “.com.”  These alterations fail sufficiently to distinguish the disputed domain name from Complainant’s STATE FARM mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to a complainant’s HARRY POTTER mark failed to distinguish the resulting domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark and the addition of a gTLD to form a domain name do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i); 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.

 

Therefore, the Panel finds that Respondent’s disputed <statefarmapparel.com> domain name is confusingly similar to Complainant’s STATE FARM service mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant has made out a prima facie case against Respondent 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 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. 

 

Complainant has met its prima facie burden on the point of Respondent’s rights to or legitimate interests in the contested domain name. Respondent’s failure to file a response to the Complaint filed in this proceeding therefore permits us to infer that it lacks rights to or legitimate interests in the disputed domain name.  See 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, 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 first observe that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <statefarmapparel.com> domain name, and that Complainant has not authorized Respondent to register the disputed 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, “Kevin Gressley,” which is not similar to the disputed domain name.  On this record, we must conclude that Respondent is not commonly known by the domain name <statefarmapparel.com> so as to have acquired rights to or legitimate interests in the contested domain pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a respondent was not commonly known by the domain name <cigaraficionada.com> so as to have demonstrated that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii));  see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the disputed <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name).

 

We next note that Complainant contends, without objection from Respondent, that Respondent’s domain name resolves to a website offering links to the websites of third parties, some of which compete 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 resolving websites.  This use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial of fair use of the <statefarmapparel.com> domain name under Policy ¶ 4(c)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the websites of a complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by employing it to redirect Internet users to a commercial search engine website with links to websites of interest to a complainant’s customers, with that respondent presumably receiving “click-through fees” in the process).

 

The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.

 

Registration and Use in Bad Faith

 

Respondent’s use of the <statefarmapparel.com> domain name in the manner alleged in the Complaint disrupts Complainant’s business, which stands as evidence that Respondent registered and uses the contested domain name in bad faith 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 disputed domain names under Policy ¶ 4(b)(iii) by using them to operate a search engine with links to the products of both a complainant and that complainant’s commercial 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 contested domain name to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represented bad faith registration and use of the domain under Policy ¶ 4(b)(iii)). 

 

Respondent uses the <statefarmapparel.com> domain name in the manner alleged in the Complaint, to gain commercially, in the form of click-through or similar fees.  This use of the disputed domain name demonstrates bad faith registration and use of the domain under Policy ¶ 4 (b)(iv).  See 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 contested domain name by using it to offer links to third-party websites that offered services similar to those offered by a complainant under its competing mark); see also 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).

 

For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all 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 <statefarmapparel.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  February 22, 2011

 

 

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