national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Monty Gee

Claim Number: FA1107001400238

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Monty Gee (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmroofclaim.com>, registered with GoDaddy.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2011; the National Arbitration Forum received payment on July 25, 2011.

 

On July 26, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <statefarmroofclaim.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@statefarmroofclaim.com.  Also on July 27, 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 19, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is an insurance and financial services company that has been doing business under the STATE FARM name and service mark since 1930.

 

Complainant has registered its STATE FARM service mark with the United States Patent and Trademark Office (“USPTO”), as Registry No. 1,979,585, registered June 11, 1996.

           

Respondent registered the disputed <statefarmroofclaim.com> domain name on April 15, 2011.

 

The disputed domain name resolves to a webpage containing links to websites offering products and services that compete with the business of Complainant. 

 

Respondent’s <statefarmroofclaim.com> domain name is confusingly similar to Complainant’s STATE FARM mark.

 

Respondent is not associated or affiliated with, or sponsored by, Complainant.

Respondent has not been authorized to use the STATE FARM mark and has not performed business using the STATE FARM mark or name.

 

Respondent is not commonly known by the disputed <statefarmroofclaim.com> domain name.

 

Respondent does not have any rights to or legitimate interests in the domain name <statefarmroofclaim.com>.

 

Respondent registered and uses the <statefarmroofclaim.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established its rights in the STATE FARM service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005).

 

Respondent’s <statefarmroofclaim.com> domain name is confusingly similar to Complainant’s STATE FARM mark in that the domain modifies Complainant’s mark only by deleting the space between the terms, adding the generic terms “roof” and “claim” and attaching the generic top-level domain (“gTLD”) “.com.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), and Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), holding that omitting spaces between the terms of the mark of another and attaching to it a gTLD to form a domain name are not sufficient to distinguish the resulting domain from the mark under the standards of Policy ¶ 4(a)(i).

 

Similarly, the addition of generic terms to the mark of another in forming a domain name does not distinguish the domain from the mark under Policy ¶ 4(a)(i).  See, for example, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) and Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001).

 

The Panel therefore finds that Respondent’s <statefarmroofclaim.com> domain name is confusingly similar to Complainant’s STATE FARM service mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under this head of the Policy, Complainant must present a prima facie case on the point that Respondent lacks rights to and legitimate interests in its contested domain name.  Once this is done, the burden shifts to Respondent to demonstrate that it has rights to or legitimate interests in its contested domain.

See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

Complainant has made out a prima facie case for purposes of Policy ¶ 4(a)(ii), while Respondent has failed to respond to the Complaint. On this record, we are justified in finding that Respondent has no rights to or legitimate interests in the disputed domain name.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to the allegations of a complaint filed under the Policy); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and where a respondent did not come forward to suggest any right or interest it may have possessed). Nevertheless, we will 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 contested domain name which are cognizable under Policy.

 

We first observe that Complainant asserts, and Respondent does not deny, that Respondent is not associated or affiliated with, or sponsored by, Complainant, that Respondent has not been authorized to use the STATE FARM mark and has not performed business using the STATE FARM mark or name, and that Respondent is not commonly known by the <statefarmroofclaim.com> domain name. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Monty Gee,” which does not resemble the contested domain name.  On this record, we are constrained to conclude that Respondent is not commonly known by the contested domain name so as to have demonstrated rights to or legitimate interests in it under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) and Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006).

 

We also note that Complainant alleges, without objection from Respondent, that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. And, in the circumstances here presented, we may comfortably presume that Respondent receives commercial advantage from its operation of the website resolving from the disputed domain name, whether in the form of click-through fees or otherwise.  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), holding that the use of a domain name which is confusingly similar to the mark of another to facilitate the operation of a pay-per-click website hosting links to other websites offering services in competition with the business of a legitimate mark holder does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).

 

The Panel thus finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s <statefarmroofclaim.com> domain name hosts pay-per-click links to websites offering insurance-related services provided by companies operating in competition with the business of Complainant.   This is disruptive of Complainant’s business and stands as evidence that Respondent’s registration and use of the <statefarmroofclaim.com> domain name is in bad faith pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that a respondent registered and used the <sportlivescore.com> domain name to disrupt a complainant’s business under the LIVESCORE mark where that respondent maintained a website in competition with the business of that complainant); 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 a disputed domain name to operate a search engine with links to the websites of a complainant’s commercial competitors).

 

It is also evident that the <statefarmroofclaim.com> domain name, which contains Complainant’s entire STATE FARM service mark, is intended to capitalize on Complainant’s business reputation in order to attract Internet users seeking information about Complainant by creating the impression that the resolving website is affiliated with, or related to, Complainant.  This it does for pay-per-click fees. This is evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website which offered competing travel services, came within the parameters of Policy ¶ 4(b)(iv)); 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).

 

It is also apparent that Respondent was aware of Complainant’s STATE FARM service mark at the time it registered the <statefarmroofclaim.com> domain name.  This supports a conclusion of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii).  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (finding that where a respondent had knowledge of a complainant’s mark when it registered a contested domain name, a finding of bad faith registration and use of the domain is justified);  see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.”).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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 <statefarmroofclaim.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  August 31, 2011

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page