State Farm Mutual Automobile Insurance Company v. Dietzel and Dietzel Inc / Domain Manager
Claim Number: FA1202001430563
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Dietzel and Dietzel Inc / Domain Manager (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmk.com> and <zstatefarm.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012.
On February 22, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <statefarmk.com> and <zstatefarm.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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 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@statefarmk.com, postmaster@zstatefarm.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 February 27, 2012.
On March 08, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Magalhães Machado as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant affirms that the domain names at issue are confusingly similar to State Farm’s servicemark that it has been using since 1930 and to State Farm’s other registered marks. And, moreover, the domain names are confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites.
Complainant contends that Respondent has no right or legitimate interest in the disputed domain names and that Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the servicemark STATE FARM. Complainant states that he did not authorize the Respondent to register the domain names or to use the STATE FARM trademark for the Respondent’s business purposes.
Complainant contends that Respondent is not commonly known under the domain names, <statefarmk.com> and <zstatefarm.com>. Complainant asserts that the Respondent does not possess independent intellectual property rights in the names. Complainant also asserts that he does not have a contractual arrangement with Respondent that would allow him to offer services under the “State Farm” name.
Complainant contends that it is likely that the Respondent registered the names to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the Complainant name; and/or to create initial interest confusion for individuals looking for information about Complainant.
B. Respondent
Respondent has sent a response agreeing to transfer the disputed domain names.
State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. State Farm engages in business in both the insurance and the financial services industry.
State Farm first began using the STATE FARM trademark in 1930 and registered it with the Patent and Trademark Office on June 11, 1996 and registered “State Farm Insurance” on September 11, 1979. State Farm has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm”:
the STATE FARM INSURANCE 3 oval logo; STATE FARM BANK; STATE FARM FEDERAL SAVINGS BANK logo; STATE FARM FIRE AND CASUALTY CO. logo; STATE FARM BENEFIT MANAGEMENT ACCOUNT; STATE FARM BAYOU CLASSIC logo; STATE FARM CATASTROPHE SERVICES; STATE FARM MUTUAL FUNDS, and STATEFARM.COM.
In Canada, State Farm has registered the STATE FARM 3 oval logo; STATE FARM; STATE FARM INSURANCE COMPANIES; STATE FARM INSURANCE, and the STATE FARM FIRE AND CASUALTY CO. logo. In the European Community, the STATE FARM 3 oval logo is registered. In Mexico, the STATE FARM 3 oval logo, STATE FARM, and STATE FARM INSURANCE are registered. See Attachment 1.
State Farm developed its Internet web presence in 1995 using the domain name <statefarm.com>.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <statefarmk.com> and <zstatefarm.com> domain names to Complainant. However, after the initiation of this proceeding, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending.
The Panel here decides that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel. Complainant has not submitted any additional submissions stating this. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them, especially in this case, where Respondent states that he owns 50 additional domain names that are similar to the ones in dispute. In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
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.
Complainant claims that it has established its rights in the STATE FARM mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996). Complainant submits multiple trademark certificates for the mark itself along with the registrations for many other marks. Based upon the registrations provided, the Panel finds that Complainant has established its rights in the STATE FARM mark under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant also claims that Respondent’s <statefarmk.com> and <zstatefarm.com> domain names are confusingly similar to its STATE FARM mark. Complainant states that Respondent’s addition of a single letter to its mark demonstrates typosquatting by Respondent. The Panel notes that the letters added, “k” and “z,” are adjacent to the letters immediately before and after them in the disputed domain name on the standard QWERTY keyboard. The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark).
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.”).
Complainant argues that Respondent is not commonly known by the disputed domain names. The Panel notes that Respondent did not claim to be commonly known by the disputed domain name in its Response. Also, Complainant states that the WHOIS information identifies the registrant of the disputed domains as “Dietzel and Dietzel Inc / Domain Manager.” Based upon the evidence available, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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 asserts that Respondent’s original use of the disputed domain names was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that prior to January 2011 the disputed domain name resolved to a website offering links to Complainant’s competitors. Previous panels have concluded that diverting Internet users to Complainant’s competitors by offering links does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); 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 concludes that Respondent is not making 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 disputed domain names.
Complainant also asserts that Respondent’s current use of the disputed domain names does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that the disputed domain name currently resolves to an inactive website. Previous panels have concluded that failure to make an active use of a disputed domain name does not meet the standard of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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)); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”). The Panel finds that Respondent’s current use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
Complainant argues that the disputed domains include only Complainant’s mark, while adding a letter to emulate a typographical error. The Panel finds that this action by Respondent constitutes typosquatting. The Panel also concludes that Respondent does not have rights or legitimate interests in the disputed domain names 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 LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Although Complainant does not allege that the prior use of the disputed domain names disrupted its business, the Panel concludes that resolving the disputed domain names to a website offering links to Complainant’s competitor did in fact disrupt Complainant’s business. As a result, the Panel finds that Respondent registered and used the disputed domain names in 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).
Although Complainant fails to allege that Respondent’s current use demonstrates bad faith, the Panel notes that the disputed domain names currently resolve to inactive websites. Previous panels have held that leaving the website, to which a disputed domain name resolves, inactive further demonstrates bad faith. 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 Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Thus, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent engaged in typosquatting by composing the disputed domain names with the entire mark along with a slight typographical error. The Panel concludes that Respondent’s addition of a single letter to Complainant’s mark, in the manner in which it was in this case, denotes typosquatting under the UDRP. The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) as a result. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Finally, the Panel also finds that Respondent’s statement in his response, informing that he owns 50 additional domain names that are similar to the ones in dispute is further evidence of Respondent’s bad faith in registering and using the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmk.com> and <zstatefarm.com> domain names be TRANSFERRED from Respondent to Complainant .
Eduardo Magalhães Machado, Panelist
Dated: March 22, 2012.
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