State Farm Mutual Automobile Insurance Company v. Cummins Performance Group / Mitchell Cummins
Claim Number: FA1104001381486
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Cummins Performance Group / Mitchell Cummins (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net>, 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 April 1, 2011; the National Arbitration Forum received payment on April 1, 2011.
On April 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 April 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@statefarmcareer.net, postmaster@statefarmsins.net, postmaster@statefarmnumber.com, postmaster@statefarmclaims.info, postmaster@statefarminsurance.net, postmaster@statefarmphonenumber.com, postmaster@statefarmphonenumber.net, postmaster@statefarmnumber.net, and postmaster@statefarmquotes.net. Also on April 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 April 27, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names.
3. Respondent registered and used the <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is an international insurance and financial services provider. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its various marks, including those for the STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent registered the <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names between February 13-14, 2011. Respondent’s disputed domain names resolve to a parked website with the registrar and display various third-party links, some of which compete 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.
The Panel finds that Respondent has rights in its STATE FARM mark under Policy ¶ 4(a)(i) through its trademark registrations of the mark with the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant argues that the <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names are confusingly similar to Complainant’s STATE FARM mark. The Panel notes that each domain name contains Complainant’s STATE FARM mark, absent the space between the terms of the mark, while adding generic or descriptive terms and a generic top-level domain (“gTLD”). The Panel finds that such additions to Complainant’s mark are not sufficient to distinguish the domain names from Complainant’s mark. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See American 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 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 famous mark and merely added two terms to it); see also 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See American 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence in the record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its STATE FARM mark, and that Respondent is not commonly known as the disputed domain names. The WHOIS information for the disputed domain names lists the registrant as “Cummins Performance Group / Mitchell Cummins,” which does not indicate that Respondent is commonly known as the disputed domain names. Respondent has not produced any evidence to show that it is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names 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 argues that Respondent’s domain names resolve to a website parked with the registrar which displays various third-party links, some of which direct Internet users to Complainant’s competitors. Complainant contends that such use of the confusingly similar domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain names does 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 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s registration and use of nine domain names containing Complainant’s mark within two days is evidence that Respondent is engaged in a pattern of bad faith registration and use. The Panel agrees and finds that Respondent’s registration of multiple domain names containing Complainant’s STATE FARM mark is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant also has submitted evidence to show that Respondent’s disputed domain names resolve to websites that feature third-party links to both competing and unrelated businesses. Complainant contends that such use of the confusingly similar domain names is further proof of Respondent’s bad faith registration and use of the domain names because such diversion results in a loss of business for Complainant. Therefore, the Panel finds that Respondent’s use of the disputed domain names to display various third-party links to competing and unrelated companies is also evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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).
Lastly, Complainant contends that Respondent is commercially benefiting from its use of the disputed domain names by collecting click-through or affiliate fees from the businesses that are advertised and linked-to on Respondent’s websites. The Panel agrees and finds that Respondent’s presumed commercial gain from its use of the domain names is further evidence that Respondent registered and is using the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
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 <statefarmcareer.net>, <statefarmsins.net>, <statefarmnumber.com>, <statefarmclaims.info>, <statefarminsurance.net>, <statefarmphonenumber.com>, <statefarmphonenumber.net>, <statefarmnumber.net>, and <statefarmquotes.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 2, 2011
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