State Farm Mutual Automobile Insurance Company v. Automotive Alliance, LLC c/o Brian Matthew
Claim Number: FA1107001397681
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Automotive Alliance, LLC c/o Brian Matthew (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmpart.com>, registered with eNom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 8, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmpart.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@statefarmpart.com. Also on July 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 August 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmpart.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmpart.com> domain name.
3. Respondent registered and used the <statefarmpart.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and the financial services industry. Complainant owns the STATE FARM mark and has used the mark since 1930 in connection with its business and developing good will. Complainant holds a number of trademark registrations for its STATE FARM marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996).
Respondent, Automotive Alliance, LLC c/o Brian Matthew, registered the <statefarmpart.com> domain name April 5, 2011. The disputed domain name resolves to a website which features numerous third-party links, some of which directly compete with Complainant’s insurance and finance business.
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.
Complainant argues that it has demonstrated its rights in the STATE FARM mark. Previous panels have determined that a complainant may demonstrate rights in a mark by registering the mark with a trademark authority. See 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)); 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). Here, Complainant holds a number of trademark registrations for its STATE FARM marks with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). Thus, the Panel decides that Complainant has established rights in its STATE FARM mark according to Policy ¶ 4(a)(i) given its registration with a trademark authority.
Respondent’s <statefarmpart.com> domain name includes Complainant’s entire STATE FARM mark and only alters it by deleting a space between the words of the mark, adding the generic term “part,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that deletion of spaces and the addition of a gTLD does not sufficiently differentiate the disputed domain name from Complainant’s mark. 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel also finds that addition of a generic term does not remove the disputed domain name from the realm of confusing similarity. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel concludes that Respondent’s <statefarmpart.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated, “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 presented a prima facie case in the instant situation. Due to Respondent’s failure to submit a response to the Complaint and its allegations, the Panel may find that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel elects to look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <statefarmpart.com> domain name. The WHOIS information identifies the domain name registrant as “Automotive Alliance, LLC c/o Brian Matthew,” which is not similar to the disputed domain name. Complainant also claims that it did not authorize, or contractually agree to let Respondent use the STATE FARM mark within the disputed domain name. Given these findings, the Panel concludes that Respondent is not commonly known by the <statefarmpart.com> domain name 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name.
The <statefarmpart.com> domain name resolves to a directory website featuring third-party links to some of Complainant’s competitors in the financial services and insurance industries. Respondent likely collects click-through fees from these links. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to third-party sites in competition with Complainant’s business is 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 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent registered and is using the disputed domain name in order to disrupt Complainant’s business for its own benefit. Internet users intending to purchase Complainant’s insurance and financial services may find Respondent’s website and end up purchasing similar services from one of the third-party competing links. The Panel finds that such registration and use constitutes bad faith 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 that Respondent receives click-through fees from the featured third-party links on the website resolving from the disputed domain name. Respondent’s confusingly similar disputed domain name and links to insurance and financial services that might be of interest to Complainant’s customers creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name. Respondent attempts to profit from this confusion by collecting click-through fees. The Panel finds that Respondent’s registration and use of the <statefarmpart.com> domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmpart.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 22, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page