State Farm Mutual Automobile Insurance Company v. EMBARK Program / M Menendez
Claim Number: FA1104001385430
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is EMBARK Program / M Menendez (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <statefarmu.com> and <statefarmu.org>, registered with GoDaddy.com, Inc.
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 25, 2011; the National Arbitration Forum received payment on April 25, 2011.
On April 26, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmu.com> and <statefarmu.org> 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 May 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@statefarmu.com, postmaster@statefarmu.org. Also on May 6, 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 31, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant uses the STATE FARM service mark in connection with the operation of its insurance and financial services businesses.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (including Reg. No. 1,979,585, issued June 11, 1996).
Respondent registered the <statefarmu.com> and <statefarmu.org> domain names on February 27, 2011.
The disputed domain names resolve to parked websites that display links to the websites of Complainant’s competitors in the insurance industry.
Respondent’s <statefarmu.com> and <statefarmu.org> domain names are confusingly similar to Complainant’s STATE FARM mark.
Respondent is not commonly known by either of the disputed domain names.
Complainant has never authorized Respondent to use the STATE FARM mark.
Respondent does not have any rights to or legitimate interests in the domain names <statefarmu.com> and <statefarmu.org>.
Respondent registered and uses the <statefarmu.com> and <statefarmu.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the same domain names were registered and are 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 established rights in the STATE FARM service mark under Policy ¶ 4(a)(i) through its registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations establish Complainant's rights in the … mark.
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
The disputed domain names are confusingly similar to the STATE FARM service mark. Each removes the space between the terms of Complainant’s mark and adds a single letter “u” to form the domain name. The generic top-level domains (“gTLD”) “.com” and “.org” have also been added. Removing spaces between the terms of a mark, adding a single letter to the mark and adding a gTLD fail to distinguish the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding confusing similarity between a complainant’s mark and a competing domain name because “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain for the purpose of determining whether it is identical or confusingly similar to a mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make out a prima facie showing in support of its allegation that Respondent lacks rights to or legitimate interests in the disputed domain names. The burden then shifts to Respondent to prove that it has such rights or interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under this head of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name).
Complainant has made out the requisite prima facie showing on the point of Respondent’s rights to or legitimate interests in the disputed domains. Respondent’s failure to respond to the Complaint filed in this proceeding permits us to conclude, without more, that it lacks rights to or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.
Nonetheless, we elect to 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 names which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by either of the disputed domain names, and that Complainant has never authorized Respondent to use the STATE FARM mark. Moreover, the pertinent WHOIS information lists the registrant of the domain names only as “M Menendez,” which does not resemble either of the domain names. From this we conclude that Respondent is not commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in either of the contested domain names under Policy ¶ 4(c)(ii). See 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 <coppertown.com> domain name, and so had failed to demonstrate rights to or legitimate interests in a contested domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it had not authorized or licensed that respondent’s use of its mark in a domain name).
We also note that Complainant alleges, without objection from Respondent, that the <statefarmu.com> and <statefarmu.org> domain names resolve to parked websites displaying links to third-party websites that compete with Complainant’s business. In the circumstances here presented, we may comfortably presume that Respondent profits from thus linking Internet users to Complainant’s competitors, whether by the receipt of click-through fees or otherwise. We conclude, therefore, that Respondent is not using the disputed domain names in connection with 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
The <statefarmu.com> and <statefarmu.org> domain names resolve to websites that feature links to the websites of Complainant’s competitors in the insurance business. Such use of the domains is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain to operate a commercial search engine with links to the websites of a complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name, which was confusingly similar to a complainant’s mark, to attract Internet users to a directory 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 presumably benefits financially from the visits of Internet users to the websites resolving from the links posted on the websites resolving from the disputed domain names. Because the domains are confusingly similar to Complainant’s STATE FARM service mark, Internet users intending to find Complainant are likely to be redirected to Respondent’s domain names and resolving websites, and likely as well to become confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the resolving websites. This is evidence of bad faith registration and use of the domains under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for respondent’s commercial gain); 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 registration and use of the domain under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have been established.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <statefarmu.com> and <statefarmu.org> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 13, 2011
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