State Farm Mutual Automobile Insurance Company v. Atif Mushtaq
Claim Number: FA1103001378471
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 Atif Mushtaq (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmuk.info>, registered with GoDaddy.com, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2011; the National Arbitration Forum received payment on March 17, 2011.
On March 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmuk.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 March 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@statefarmuk.info. Also on March 18, 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 April 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. In 1999 State Farm opened a Federally Chartered Bank known as State Farm Bank. State Farm engages in business in both the insurance and the financial services industry. State Farm also has established a nationally recognized presence on televised and other media.
State Farm first began using the “State Farm” trademark in 1930 and registered it with the Patent and Trademark Office on June 11, 1996. State Farm has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm”:
the State Farm Insurance 3 oval logo; State Farm Bank; State Farm Bank logo; State Farm Fire and Casualty Co. logo; State Farm Benefit Management Account; State Farm Bayou Classic logo; State Farm Catastrophe Services; State Farm Mutual Funds; State Farm Dollars; State Farm Green Space; State Farm Red Magazine; and statefarm.com.
In Canada State Farm has registered the State Farm 3 oval logo; State Farm; State Farm Insurance Companies; State Farm Insurance and the State Farm Fire and Casualty Co. logo. In the European Community the State Farm 3 oval logo is registered. In Mexico the State Farm 3 oval logo, State Farm and State Farm Insurance are registered. (See Attachment 1 for copies of registrations). The domain name registered by the Respondent incorporates State Farm’s registered trademark, “State Farm” and is confusingly similar to State Farm’s registered marks.
For over 70 years State Farm has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.
State Farm developed its Internet web presence in 1995 using the domain name statefarm.com. At its web site, State Farm offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents. State Farm has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.
Conduct on Part of Respondent
In January of 2011 it was brought to State Farm's attention that Respondent had registered Complainant’s trademark "State Farm" as part of the domain name, “statefarmuk.info.” The domain name originally sent users to a web page which stated it was provided by GoDaddy.com and which contained numerous links for various products and companies, including insurance companies who are in direct competition with State Farm Insurance. The site now points to a Google page that states “the requested URL was not found on this server”
On January 6, 2011, a cease and desist letter was sent by Complainant via email to Respondent at salmanmeher@yahoo. On January 31, 2011, another cease and desist letter was sent to the Respondent via email; however, there has been no response from the Respondent. On March 4, 2011, a cease and desist letter was sent, along with a draft arbitration complaint.
Because of State Farm’s substantial efforts, the public associates the phrase “State Farm” with the owner of the servicemark “State Farm.” The State Farm mark is distinctive and has acquired secondary meaning. The domain name at issue is confusingly similar to State Farm’s servicemark that it has been using since 1930 and to State Farm’s other registered marks. Moreover, the domain name is confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites. Consumers who discover this domain name are likely to be confused as to Respondent's affiliation with, sponsorship by or connection to State Farm.
Respondent has no right or legitimate interest in the disputed domain name. State Farm did not authorize the Respondent to register the domain name or to use the State Farm trademark for the Respondent’s business purposes.
Respondent is not commonly known under the domain name, “statefarmuk.info.” It is believed that the Respondent has never been known by or performed business under the domain name at issue. The Respondent does not possess independent intellectual property rights in the name. In addition, State Farm does not have a contractual arrangement with Respondent that would allow them to offer services under the State Farm name.
State Farm believes that the Respondent registered the name to create the impression of association with State Farm, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about State Farm.
Respondent Has Acted in Bad Faith
It is clear that the name registered by Respondent is confusingly similar to State Farm’s trademarks. Indeed, the name includes one of State Farm's registered marks "State Farm.” This domain is clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the site.
State Farm has filed numerous complaints relating to its domain names under the ICANN Uniform Dispute Resolution Process. The arbitrators have consistently found that the use of State Farm’s trademarks in a domain name, whether or not additional language, characters or hyphens are added to the State Farm name, is confusingly similar to State Farm’s trademarks and that such registrations have been done in bad faith. (See State Farm Mut. Auto. Ins. Co. v. Advisory Services, Inc., FA94662 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc., FA94427 (Nat. Arb. Forum, May 27, 2000), State Farm Mut. Auto. Ins. Co. v. I & B, FA94719 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. JIT Consulting, FA94335 (Nat. Arb. Forum April 24, 2000), State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA94663 (Nat. Arb. Forum June 1, 2000), State Farm Mut. Auto. Ins. Co. v. Try Harder & Company, FA94730 (Nat. Arb. Forum June 15, 2000), State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA94802 (Nat. Arb. Forum June 13, 2000), State Farm Mut. Auto. Ins. Co. v. Richard Pierce, FA94808 (Nat. Arb. Forum June 6, 2000), State Farm Mut. Auto. Ins. Co. v. HPR, FA94829 (Nat. Arb. Forum June 22, 2000), State Farm Mut. Auto. Ins. Co. v. Dean Gagnon, FA0710001087389 (Nat. Arb. Forum, November 16, 2007), State Farm Mut. Auto. Ins. Co. v. Jung Tae Young, FAFA0710001087458 (Nat. Arb. Forum, November 20, 2007), State Farm Mut. Auto. Ins. Co. v. Richard Pompilio, FAFA0710001092410 (Nat. Arb. Forum, November 20, 2007). (Decisions can be viewed at www.icann.org)
As in the cases above, Respondent has no legitimate claim in the domain name at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the name in bad faith.
In accordance with 15 U.S.C. §1125(d) Respondent’s registration of the disputed domain name was in bad faith in that:
a) Respondent has never been known by the name “State Farm.” The Respondent has never traded under the name “State Farm.” Respondent has not acquired a trademark or other intellectual property rights in the domain name in question. This obvious lack of right to use the name in question shows bad faith registration and use.
b) Despite having registered the name “statefarmuk.info,” Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor agent of State Farm. Registering a domain name for products and services that it does not have authority to offer, shows that the Respondent has acted in bad faith.
c) While the Respondent registered the domain name “statefarmuk.info,” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals originally were sent to a web page which stated it was provided by GoDaddy.com and which contained numerous links for various products and companies, including insurance companies who are in direct competition with State Farm Insurance. The site now points to a Google page that states “the requested URL was not found on this server”. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.
d) The Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. As of the date of this complaint, there was no legitimate content associated with the name and no demonstrable indication that legitimate content would be forthcoming. Even if Respondent did put State Farm or professional designation information on its web site, its content along with its proposed domain name, would be in direct conflict with information State Farm already provides and would cause confusion to potential customers. Failure to resolve the domain name to legitimate web site content indicates that the Respondent has no legitimate reason for having registered the name and demonstrates that it has registered and is using the name in bad faith.
e) Respondent has been sent Complainant’s cease and desist letters for notification of Respondent’s unauthorized use of the name in question. Failure to comply with Complainant’s cease and desist requests demonstrates it has registered and is using the name in bad faith.
f) The Respondent registered its domain name, “statefarmuk.info” on January 1, 2011. (See Attachment 2) State Farm registered its domain name “statefarm.com” on May 24, 1995. (See Attachment 5) The Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” and the long-term use of the domain name “statefarm.com.” The registration of the domain name by the Respondent was intended to be in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant State Farm Mutual Automobile Insurance Company has been doing business in the insurance and financial services industry since 1930. Complainant owns the STATE FARM mark and holds numerous trademark registrations for its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent Atif Mushtaq registered the <statefarmuk.info> domain name on January 1, 2011. The disputed domain name previously routed Internet users to a website which featured third-party links to various products and companies, including insurance companies in direct competition with Complainant’s business. The resolving website is currently inactive.
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 Complainant to 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 contends it has demonstrated its rights in the STATE FARM mark. Previous panels have determined a complainant can establish rights in a mark via registration with a federal trademark authority. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Complainant is not required to register its mark within Respondent’s country. See 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Here, Complainant holds numerous trademark registrations for its STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996). The Panel finds Complainant has established rights in its STATE FARM mark through its registration with a trademark authority under Policy ¶4(a)(i).
Complainant argues Respondent’s <statefarmuk.info> domain name is confusingly similar to its STATE FARM mark. The disputed domain name contains the mark in its entirety and merely deletes a space between the words of the mark, adds the geographic term “uk,” and adds the generic top-level domain (“gTLD”) “.info.” The Panel finds the deletion of a space and the affixation of a gTLD do not prevent a finding of confusing similarity. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”). The Panel also determines the addition of a geographic term does not adequately distinguish the disputed domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Therefore, the Panel concludes Respondent’s disputed domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent has no rights or legitimate interests in the <statefarmuk.info> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Here, Complainant has made a prima facie showing. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume Respondent has no rights or legitimate interests under Policy ¶4(a)(ii). 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.”). Out of an abundance of caution, the Panel will first look to the record to see if Respondent has rights or legitimate interests under Policy ¶4(c).
Complainant argues Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “atif mushtaq,” which is not similar to the disputed domain name. Complainant has not authorized or contractually arranged for Respondent to use its STATE FARM mark within the disputed domain name. The Panel finds Respondent is not commonly known by the <statefarmuk.info> domain name, under Policy ¶4(c)(ii), since no additional information in the records indicates otherwise. See 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); see also 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).
Respondent’s disputed domain name previously resolved to a dynamic parking website featuring third-party links, some of which were in direct competition with Complainant’s insurance business. Respondent likely received click-through fees from these links. The Panel finds Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to Complainant’s competitors in the insurance industry was 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 also 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)).
Complainant maintains Respondent’s <statefarmuk.info> domain name currently resolves to an inactive Google website which states “the requested URL was not found on this server.” The Panel finds Respondent’s failure to make an active use of the disputed domain name is further evidence of a lack of rights or legitimate interests under Policy ¶4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶4(a)(ii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and prior use of the disputed domain name disrupted its business. Internet users intending to purchase or investigate Complainant’s insurance products and services may have found Respondent’s website as a result of the confusingly similar disputed domain name. Users may then have purchased similar products from one of the competing third-party links instead. The Panel finds Respondent’s previous use of the disputed domain name to reroute Internet users to Complainant’s competitors did disrupt Complainant’s business, which is evidence of bad faith use and registration under 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers Respondent received click-through fees from the dynamic parking web site’s links. Internet users searching online for Complainant may have found Respondent’s website instead and became confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name , third-party links, and products offered by the links. Respondent tried to profit from this confusion by receiving click-through fees. The Panel finds Respondent’s registration and use of the <statefarmuk.info> is evidence of bad faith according to Policy ¶4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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).
Respondent’s <statefarmuk.info> domain name is currently being inactively held. The resolving website contains no content. The Panel finds no actual use of the disputed domain name is evidence of bad faith under Policy ¶4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <statefarmuk.info> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: April 14, 2011
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