State Farm Mutual Automobile Insurance Company v. Kay Frenzer-Zeeh
Claim Number: FA1203001436331
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Kay Frenzer-Zeeh (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmautoinsurance.mobi>, 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 26, 2012; the National Arbitration Forum received payment on March 26, 2012.
On March 27, 2012, GoDaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoinsurance.mobi> 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 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 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@statefarmautoinsurance.mobi. Also on March 28, 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’s <statefarmautoinsurance.mobi> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
Respondent is not commonly known by the disputed domain name.
Respondent uses the <statefarmautoinsurance.mobi> domain name to resolve to a website that states it is provided by GoDaddy.com.
Respondent registered the <statefarmautoinsurance.mobi> domain name for the purpose of creating confusion as to Complainant’s association with the disputed domain name. Complainant believes that the Respondent registered the name to create the impression of an association with State Farm, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about State Farm.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its STATE FARM mark at all times relevant to this proceeding.
The at-issue domain name is confusingly similar to Complainant’s STATE FARM trademark.
Respondent has no rights or interests in respect of the domain name.
The domain name was registered to impermissibly capitalize on the STATE FARM trademark.
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 has rights in a trademark that is confusingly similar to the at-issue domain name.
The at-issue domain name differs from the mark only in the addition of the generic term “insurance” and the generic top-level domain (“gTLD”) “.mobi.” It is well settled that the addition of a descriptive term to a trademark is not sufficient to distinguish the domain name from a 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). This is especially true here where the added term describes Complainant’s business. Likewise the addition the gTLD is inconsequential both independently and when considered in concert with the descriptive term “insurance.” See generally 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 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. Moreover, the WHOIS record for the disputed domain name lists “Kay Frenzer-Zeeh” 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.
The evidence presented by Complainant is sufficient to make out a prima facie case under Policy ¶4(a)(ii). Since there is no evidence tending to prove that Respondent has rights and legitimate interest in respect of the at-issue domain name, Complainant’s prima facie case is conclusive.
The domain name was registered and used in bad faith.
The unauthorized use of Complainant’s STATE FARM trademark in a domain name, whether or not additional language, characters or hyphens are added to the State Farm name is, as mentioned above with regard to Policy ¶4(a)(i), confusingly similar to Complainant’s STATE FARM trademark. The use of the STATE FARM trademark in a domain name has been consistently found to be in bad faith under the UDRP. (See State Farm Mut. Auto. Ins. Co. v. Advisory Services, Inc., FA94662 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc., FA94427 (Nat. Arb. Forum, May 27, 2000), State Farm Mut. Auto. Ins. Co. v. I & B, FA94719 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. JIT Consulting, FA94335 (Nat. Arb. Forum April 24, 2000), State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA94663 (Nat. Arb. Forum June 1, 2000), State Farm Mut. Auto. Ins. Co. v. Try Harder & Company, FA94730 (Nat. Arb. Forum June 15, 2000), State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA94802 (Nat. Arb. Forum June 13, 2000), State Farm Mut. Auto. Ins. Co. v. Richard Pierce, FA94808 (Nat. Arb. Forum June 6, 2000), State Farm Mut. Auto. Ins. Co. v. HPR, FA94829 (Nat. Arb. Forum June 22, 2000), State Farm Mut. Auto. Ins. Co. v. Dean Gagnon, FA0710001087389 (Nat. Arb. Forum, November 16, 2007), State Farm Mut. Auto. Ins. Co. v. Jung Tae Young, FAFA0710001087458 (Nat. Arb. Forum, November 20, 2007), State Farm Mut. Auto. Ins. Co. v. Richard Pompilio, FAFA0710001092410 (Nat. Arb. Forum, November 20, 2007). Therefore, the Panel concludes that there is no conceivable good faith use for a domain name, such as <statefarminsurance.mobi>, that incorporates Complainant’s well-known STATE FARM trademark and, as here, complements it with a relevant descriptor of Complainant’s business. See Telstra Corporation Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (finding “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”). The only exception to this rule would of course be where Complainant grants an appropriate license to use its mark in a domain name. The Panel need not consider the at-issue domain name’s resolution to the registrar’s parking page as that fact is not necessary to its finding of bad faith registration and use. Furthermore, the circumstances here implicitly show that the at-issue domain name is actively being used in bad faith since the fact of the domain name’s registration is preventing Complainant from reflecting its mark in a corresponding domain name. See Policy 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be Granted.
Accordingly, it is Ordered that the <statefarmautoinsurance.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 3. 2012
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