State Farm Mutual Automobile Insurance Company v. Above.com Domain Privacy
Claim Number: FA1104001382812
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmmutalfunds.com>, registered with Above, Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2011; the National Arbitration Forum received payment on April 11, 2011.
On April 11, 2011, Above, Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <statefarmmutalfunds.com> domain name is registered with Above, Pty Ltd. and that Respondent is the current registrant of the name. Above, Pty Ltd. has verified that Respondent is bound by the Above, Pty Ltd. 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 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 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@statefarmmutalfunds.com. Also on April 12, 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 May 4, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has been doing business under the STATE FARM service mark and name since 1930.
Complainant engages in business in both the insurance and financial services industries.
Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the STATE FARM service mark (Reg. No. 1,979,585, issued June 11, 1996).
Respondent registered the <statefarmmutualfunds.com> domain name on January 7, 2011.
The disputed domain name resolves to a website displaying pay-per-click links to websites offering insurance and financial products from companies in competition with the business of Complainant.
Respondent’s <statefarmmutalfunds.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent is not associated or affiliated with, or sponsored by, Complainant.
Complainant did not authorize Respondent to register the domain name <statefarmmutualfunds.com> or use Complainant’s mark.
Respondent has never been known by or performed business under the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <statefarmmutalfunds.com>.
Respondent registered and uses the <statefarmmutalfunds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(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.
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.
Complainant has rights in its STATE FARM service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). This is true notwithstanding that Respondent lives or operates in Australia instead of the U.S. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph Policy 4(a)(i) whether a complainant’s mark is registered in a country other than that of a respondent’s place of business, it being sufficient that a complainant has rights in its mark in some jurisdiction).
Respondent’s <statefarmmutualfunds.com> domain name is confusingly similar to Complainant’s STATE FARM service mark. The disputed domain name includes Complainant’s entire mark, merely deleting the spaces between the terms of the mark and adding the descriptive terms “mutual” and “funds,” which describe an aspect of Complainant’s business, and finally adding the generic top-level domain (“gTLD”) “.com.” Adding descriptive words to Complainant’s mark in the disputed domain name does not alleviate confusing similarity, but rather heightens confusion where, as here, the added words relate to Complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).
Likewise, deleting the space between terms of a complainant’s and adding a gTLD to form a domain name does not sufficiently distinguish the domain name to avoid a finding of confusing similarity. See 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 complainant’s mark and the addition of a gTLD do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that Respondent’s <statefarmmutualfunds.com> domain name is confusingly similar to Complainant’s STATE FARM service mark under Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant make out a prima facie case on the point of Respondent’s lack of rights to or legitimate interests in the contested domain name. Thereupon the burden shifts to Respondent to demonstrate that it nonetheless has such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has established the requisite prima facie case under this head of the Policy. Respondent’s failure to submit a Response to the allegations of the Complaint filed in this proceeding permits us to conclude, without more, that Respondent lacks both rights to and legitimate interests in the disputed domain name. See Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because a respondent defaulted and did not demonstrate that it had any rights to or legitimate interests in disputed domain names, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests in a contested domain name where no such right or interest was immediately apparent and where a respondent did not come forward to suggest any right or interest it may have possessed).
We nonetheless elect to examine the evidence of record, 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 note that Complainant alleges, and Respondent does not deny, that Respondent is not associated or affiliated with, or sponsored by, Complainant, that Complainant did not authorize Respondent to register the domain name <statefarmmutualfunds.com> or otherwise to use Complainant’s mark, and that Respondent has never been known by or performed business under that domain name. Moreover, the WHOIS information for the <statefarmmutualfunds.com> domain name identifies the registrant only as “Above.com Domain Privacy,” which does not resemble the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name and therefore lacks rights to and legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the relevant WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); 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.”).
We next observe that Complainant argues, without objection from Respondent, that Respondent’s <statefarmmutualfunds.com> domain name directs Internet users to a featuring pay-per-click links to websites advertising financial and insurance products that compete with the business of Complainant. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a 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 business of a 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), where a respondent presumably earned “click-through” fees for each consumer it redirected to such websites).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s website resolving from the <statefarmmutualfunds.com> domain name features pay-per-click links to websites offering financial services competing with the business of Complainant. This disrupts Complainant’s business, and thus indicates bad faith registration and use of the contested domain under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the domain name <eebay.com> in bad faith where that respondent used the domain name to promote auction sites competing with the business of a complainant); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that, where a respondent’s website, among other things, featured hyperlinks to websites competing with the business of a complainant, that respondent’s use of a contested domain name constituted disruption of that complainant’s business, and thus bad faith registration and use of the domain, under Policy ¶ 4(b)(iii)).
Respondent’s <statefarmmutualfunds.com> domain name resolves to a website whose evident purpose is to generate revenue for Respondent from the visits of Internet users to its featured pay-per-click links. Because the contested domain name is confusingly similar to Complainant’s STATE FARM service mark, the resolving website creates a likelihood of confusion among Internet users as to the possibility of Complainant’s affiliation with or sponsorship of Respondent’s website. Respondent’s attempt to profit from this confusion demonstrates bad faith registration and use of the contested domain pursuant to 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 a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites that featured services similar to those offered by that complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005):
The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s … mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the … domain name constitutes 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).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <statefarmmutalfunds.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 10, 2011
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