State Farm Mutual Automobile Insurance Company v. shon olson
Claim Number: FA1203001435387
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is shon olson (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmwho.com>, registered with GoDaddy Software, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2012; the National Arbitration Forum received payment on March 20, 2012.
On March 21, 2012, GoDaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmwho.com> domain name is registered with GoDaddy Software, Inc. and that Respondent is the current registrant of the name. GoDaddy Software, Inc. has verified that Respondent is bound by the GoDaddy Software, 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 March 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@statefarmwho.com. Also on March 22, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a nationally known insurance company that has been doing business under the STATE FARM name since 1930. Complainant has registered its STATE FARM mark and other variations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996). Complainant developed its web presence in 1995 using the <statefarm.com> domain name.
Respondent registered the <statefarmwho.com> domain name on August 19, 2011. Respondent’s domain name directs Internet users to a website stating it is provided by GoDaddy.com and containing numerous links for various products and companies, including insurance companies in competition with Complainant. The disputed domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent is not commonly known by the disputed domain name. Respondent registered the disputed domain name to trade off the goodwill of Complainant’s mark and is not using the disputed domain name in connection with a bona fide offering of goods or services. Respondent registered and uses the disputed domain name to attract consumers seeking Complainant and create customer confusion as to the source or sponsorship of the website. Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent did communicate with the dispute resolution provider explaining that the domain name was intended to be used as a “marketing tag line.”
Complainant had, and has, trademark rights in its STATE FARM mark at all times relevant to this proceeding.
Respondent has no rights or interests in respect of the domain name.
Respondent intended to use the domain name as a marketing tag line for a speculative insurance business that might use it to compete with Complainant.
The website referenced by the at-issue domain name shows links to businesses that are in direct competition with Complainant.
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.
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 shows that it has registered its STATE FARM mark and variations of the mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). Trademark registration with the USPTO is sufficient to prove Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The at-issue domain name differs from the mark only in the addition of the generic term “who” and the generic top-level domain (“gTLD”) “.com.” It is well settled that the addition of a generic term to a trademark is not sufficient to distinguish the domain name from the trademark for the purposes of Policy 4(a)(i). See i.e. Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000), and Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001). Likewise the addition the gTLD is inconsequential. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Therefore the Panel concludes that Respondent’s <statefarmwho.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Respondent lacks rights and interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of his rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since the Respondent has failed to submit a formal response, if Complainant makes out a prima facie case it will conclusively show that Respondent lacks rights and interests under Policy ¶4(a)(ii).
Respondent is not associated with, affiliated with, or sponsored by Complainant. Complainant did not authorize Respondent to register the at-issue domain name or use the STATE FARM trademark for any purpose. Furthermore, Respondent is not commonly known by the <statefarmwho.com> domain name and Respondent has never been known by, or performed business under, that name. Respondent does not possess independent intellectual property rights in the at-issue domain name and does not have any contractual agreement with Complainant. Indeed, the WHOIS record for the disputed domain name lists Respondent “Shon Olson” as the registrant. Therefore, neither the WHOIS information nor any other evidence in the record supports a finding under Policy ¶ 4(c)(ii) that Respondent is commonly known by the disputed domain name. Additionally, here is no independent evidence showing Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Complainant evidences that Respondent’s at-issue domain name resolves to a website provided by GoDaddy.com that displays numerous links to other products and companies, including insurance companies that compete with Complainant. The website referenced by the at-issue domain name suggests that Respondent may have registered and used the disputed domain name in order to trade off Complainant’s goodwill. Notably the brief correspondence from Respondent to the dispute resolution provider indicates that Respondent registered the at-issue domain name precisely for the purpose of trading on a marketing tag line containing Complainant’s trademark. The links displayed on Respondent’s <statefarmwho.com> website are presumably pay-per-click links. Respondent’s comment in his email to the dispute resolution provider that he “no longer [has] the opportunity to change the site” suggests that he did have such ability prior to the filing of the instant action and corresponding locking of the domain name during its pendency. Respondent’s use of the domain name to display a links directory is inconsistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and (iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Without any evidence contrary to a finding in Complainant’s favor with regard to Paragraph 4(a)(ii), the Panel is compelled to conclude that Respondent lacks rights and legitimate interests in respect of the disputed domain name.
Respondent registered and uses the at-issue domain name in bad faith.
Admittedly, Respondent registered the disputed domain name to trade off the goodwill associated with the STATE FARM mark. The domain name is a slogan that Respondent intended to be used by one of Complainant’s competitors, and further to create initial interest confusion to lure individuals looking for information about Complainant to a site referenced by the disputed domain name. Respondent’s motive for registering the disputed domain name was to attract those parties seeking information about Complainant to visit the related website. Upon arriving at the Complainant’s website there is customer confusion as to the source or sponsorship of the site. The disputed domain name resolves to a GoDaddy.com parking web page that contains numerous links for various products and companies, including insurance companies that are in competition with Complainant. Respondent thus registered and uses the disputed domain name with the purpose of attracting consumers and creating initial confusion as to the source of sponsorship of the referenced website. The forgoing is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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).
Because of the registration of Complainant’s own domain name, its USPTO-registered trademarks, and perhaps more importantly the Panel’s inescapable notice of Complainant’s extensive well placed media and print advertising for many decades, Respondent at a minimum must have known of Complainant’s long-term use of its predominant STATE FARM mark at the time he registered the domain name. It is therefore inconceivable to reject the proposition that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark at the time Respondent registered the at-issue domain name and it is difficult to conceive of any use of the disputed domain name that might reasonably be considered a good faith use. No such good faith use is suggested by the record. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
Finally, during the course of the parties dispute Complainant sent Respondent a cease and desist letter notifying Respondent of his unauthorized use of the at-issue domain name. Respondent failed to respond to, or comply with, Complainant’s letter. By ignoring Complainant’s letter, the Respondent admits by his silence that the allegations contained therein are true and further and that Respondent was, and is, intentionally acting with wanton disregard of Complainant’s trademark rights.
Considering the great weight of the evidence set out above, the Panel must conclude that Respondent registered the disputed domain name in bad faith under 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 <statefarmwho.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 24, 2012
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