State Farm Mutual Automobile Insurance Company v. Sandalilang / Sandalization Nation
Claim Number: FA1202001429930
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Sandalilang / Sandalization Nation (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmhealthinsurance.net>, registered with eNom.com.
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.
The Honourable Neil Anthony Brown QC 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 17, 2012, eNom.com confirmed by e-mail to the National Arbitration Forum that the <statefarmhealthinsurance.net> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.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 February 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@statefarmhealthinsurance.net. Also on February 22, 2012, 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 March 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant claims:
1. Complainant began doing business under its STATE FARM mark in 1930.
2. Complainant engages in business in the insurance and financial services industry.
3. Complainant holds a trademark registration for its STATE FARM INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,125,010 registered September 11, 1979) and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA424004 registration date March 4, 1994).
4. Respondent registered the <statefarmhealthinsurance.net> domain name on September 8, 2011.
5. The disputed domain name is confusingly similar to Complainant’s mark.
6. Respondent’s <statefarmhealthinsurance.net> domain name resolves to a website that contains Complainant’s trademarks and appears to be Complainant’s website but does not have any active content.
7. Respondent is not commonly known by the disputed domain name.
8. Respondent has no rights or legitimate interest in the disputed domain name.
9. The disputed domain name was registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a widely-known and long-established US company in the insurance and financial services industry.
3. Complainant has used the internet for the purposes of its business since 1995, utilizing its domain name <statefarm.com>
4. Respondent registered the <statefarmhealthinsurance.net> domain name on September 8, 2011. The domain name resolves to a website that contains Complainant’s trademarks and appears to be Complainant’s website but does not have any active content.
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.
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.”).
Complainant submits that the disputed domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark and submits evidence to establish that mark. The evidence, which the Panel accepts, shows Complainant’s trademark registrations for its STATE FARM INSURANCE mark with the USPTO (Reg. No. 1,125,010 registered September 11, 1979) and CIPO (Reg. No. TMA424004 registration date March 4, 1994). While Respondent resides or operates in Indonesia, the Panel points out that Complainant’s trademark registrations with the USPTO and CIPO are sufficient to establish Complainant’s rights in its STATE FARM INSURANCE mark under Policy ¶ 4(a) (i). See 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’)”); see also 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).Complainant’s evidence therefore shows that Complainant has trademark rights in the STATE FARM INSURANCE mark.
The Panel also finds that the disputed domain name is confusingly similar to the STATE FARM INSURANCE mark. That is so because the Panel has compared both the domain name and the mark and determines that the disputed domain name differs from Complainant’s mark only by the addition of the generic term “health” and the generic top-level domain (“gTLD”) “.net.” The Panel finds that the additions of a generic term and a gTLD both fail adequately to distinguish a disputed domain name from Complainant’s mark. In particular it has been held many times by UDRP panels that a generic expression, such as the word “health” in the present case, cannot diminish confusing similarity which is otherwise present, as it is in the instant proceedings. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that Respondent’s <statefarmhealthinsurance.net> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark for the purposes of Policy ¶ 4(a)(i) and Complainant has made out the first of the three elements that it must establish.
It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Applying that principle, the Panel finds that Complainant has made out such a prima facie case. The prima facie case is based on the following considerations:
(a) Respondent has chosen as its domain name Complainant’s STATE FARM INSURANCE mark and has embodied the whole of the mark in the domain name, adding only the generic word “ health” and the generic Top Level Domain “.net”;
(b) Respondent has then linked the domain name to a website carrying Complainant’s trademark in several places, so that the website gives the impression that it is an official website of Complainant thus giving the false impression to internet users that the disputed domain name is an official domain name of Complainant and that it has led to an official website of Complainant.
(c) the use of Complainant’s STATE FARM INSURANCE mark in the manner just described has clearly been undertaken without the knowledge or approval of Complainant.
(d) Complainant also claims that Respondent is not commonly known by the <statefarmhealthinsurance.net> domain name. Complainant asserts that Respondent does not possess intellectual property rights in the disputed domain name and that Respondent and Complainant do not have a contractual relationship. Moreover, Complainant claims that Respondent is not associated with, affiliated with, or sponsored by Complainant. The Panel notes that the WHOIS information lists “Sandalilang / Sandalization Nation” as the registrant of the <statefarmhealthinsurance.net> domain name. Moreover, Respondent did not file a Response or otherwise respond to these allegations. Therefore, the Panel holds that Respondent is not commonly known by the <statefarmhealthinsurance.net> domain name under Policy ¶ 4(c) (ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
(e) Complainant also contends that Respondent is not using the <statefarmhealthinsurance.net> domain name and has not made any demonstrable preparations to use the disputed domain name. Complainant provides a screenshot of the resolving website. See Complainant’s Exhibit 3. The Panel notes that the disputed domain name contains the heading “State Farm Health Insurance” and contains buttons that Internet users may click. However, Complainant claims that none of the buttons lead to any legitimate content. Therefore, Complainant argues that Respondent is not making an active use of the disputed domain name. The Panel accepts that submission and finds that Respondent’s failure to make an active use of the <statefarmhealthinsurance.net> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <statefarmhealthinsurance.net> domain name. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent does not make an active use of the <statefarmhealthinsurance.net> domain name. Complainant contends that Respondent appears to have begun creating a website that seeks to give the false impression that it is an official website of Complainant. However, Complainant alleges that Respondent has not placed any legitimate content on the resolving website. The Panel notes that the website does not appear to have any content aside from a title, “State Farm Health Insurance,” and a few buttons: “Home,” “Privacy Policy,” “Contact Us,” and “Farm Insurance.” Complainant asserts that these buttons do not resolve to legitimate content. The Panel agrees with Complainant that Respondent is not making an active use of the <statefarmhealthinsurance.net> domain name and this enables the conclusion to be drawn that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a) (iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use 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).
Secondly, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the STATE FARM INSURANCE mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. On the totality of the evidence, the Panel draws the inference that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a) (iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Thirdly, having regard to the whole of the evidence, the Panel concludes that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. That is so because the STATE FARM INSURANCE trademark is so well-known, Respondent has used it without any authority in such a flagrant abuse of Complainant’s trademark rights and as there can be no legitimate reason why Respondent would have registered the disputed domain name and used it in the manner it has.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmhealthinsurance.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 23, 2012
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