State Farm Mutual Automobile Insurance Company v. Robert Link
Claim Number: FA1202001429918
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company , Illinois, USA. Respondent is Robert Link (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsu.com>, registered with Network Solutions, LLC.
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 February 16, 2012; the National Arbitration Forum received payment on February 16, 2012.
On February 22, 2012, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <statefarminsu.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. 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 February 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2012 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@statefarminsu.com. Also on February 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on March 13, 2012.
On March 20, 2012, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant has registered the STATE FARM INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,125,010 registered September 11, 1979);
b. Complainant has also registered marks that incorporate the STATE FARM INSURANCE mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA424004 registered March 4, 1994);
c. Respondent’s <statefarminsu.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark;
d. Respondent’s <statefarminsu.com> domain name previously resolved to a website offering a single link to another website, which provided insurance quotes in direct competition with Complainant’s own business;
e. Respondent’s <statefarminsu.com> domain name currently resolves to a website that claims it is a blog site offered to provide commentary on Complainant and its business;
f. Respondent does not have rights or legitimate interests in the disputed domain name;
g. Respondent registered, used, and is using the disputed domain name in bad faith;
h. Respondent has engaged in typosquatting;
i. Respondent knew of Complainant’s rights in the STATE FARM INSURANCE mark.
B. Respondent
Complainant holds registered trademarks for the STATE FARM INSURANCE mark with the United States Patent and Trademark Office. Complainant has met the requirements of Policy ¶ 4(a)(i)–(iii).
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."
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.
(4) 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."
Complainant contends that it has established its rights in the STATE FARM INSURANCE mark by registering it with governmental trademark authorities, namely the USPTO (e.g., Reg. No. 1,125,010 registered September 11, 1979) and the CIPO (e.g., Reg. No. TMA424004 registered March 4, 1994). The registering of a mark with institutions like the USPTO and CIPO establishes rights in the mark within the meaning of Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”). Therefore, the Panel finds that Complainant has established its rights in the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s disputed domain name is confusingly similar to its STATE FARM INSURANCE mark. The disputed domain name includes the entire distinctive portion of the mark, merely removing the space between the terms and the final letters “rance” from the last term of the mark, while adding the generic top-level domain (“gTLD”) “.com.” The Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because the changes made fail to sufficiently differentiate the domain name from the 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)); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent is not commonly known by the disputed domain name. Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “Robert Link.” Based upon the evidence available, the Panel concludes that Respondent is not commonly known by the <statefarminsu.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also claims that Respondent’s previous use of the disputed domain name did not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant states that, prior to Respondent’s receipt of a cease-and-desist letter from Complainant, the disputed domain name resolved to a website offering one primary link. Complainant claims that this link resolved to a website where Internet users were able to get insurance quotes from many providers, all of whom competed with Complainant’s business. Based upon Respondent’s prior use of the disputed domain name, the Panel concludes that Respondent was not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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 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)).
Complainant argues that Respondent’s current use of the disputed domain name does not give Respondent rights or legitimate interests in the disputed domain name. Complainant states that Respondent’s disputed domain name resolves to a website that claims to be offering a forum for Complainant’s customers to discuss its experiences with Complainant. The Panel notes that no actual customer comments are offered at the website. Therefore, based upon the evidence provided, the Panel finds that the website is inactive but for the statement provided by Respondent that it is a comment website for Complainant’s customers. The Panel concludes that Respondent’s failure to make an active use of the disputed domain name demonstrates a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel also agrees with Complainant that the composition of the disputed domain name demonstrates typosquatting, indicating a lack of rights or legitimate interests on the part of Respondent under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Complainant claims that Respondent’s inclusion of a disclaimer fails to establish rights or legitimate interests in the disputed domain name. Complainant states that the inclusion of a disclaimer does little to actually change Respondent’s rights or interests in the domain because Internet users are not exposed to the disclaimer until they arrive at the website. The Panel concludes that including the disclaimer does not mitigate a finding that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant states that the disputed domain name resolved to a website offering a single link to a website where Internet users could receive insurance quotes. The Panel may presume that Respondent generated revenue by collecting a click-through fee for each Internet user it diverted to the linked website. Thus, the Panel concludes that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant also asserts that Respondent’s current use of the disputed domain name indicates bad faith registration and use. Complainant states the disputed domain name currently resolves to a website that claims it will be offering comments that Complainant’s customers provide. The Panel notes that the printout from the website does not include any of the intended content at this time. Therefore, the Panel finds that Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel notes that Respondent has included a disclaimer on the website to which the disputed domain name currently resolves. Previous panels have held that a disclaimer does not preclude a finding of bad faith registration and use. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “). Thus, the Panel finds that Respondent’s inclusion of a disclaimer on its website fails to mitigate a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant also contends that, in light of the fame and notoriety of Complainant's STATE FARM INSURANCE mark, it is inconceivable that Respondent could have registered the <statefarminsu.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant also states that the content provided from the website indicates actual knowledge on the part of Respondent. The Panel agrees with Complainant and holds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and, as a result, finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminsu.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 3, 2012
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