State Farm Mutual Automobile Insurance Company v. CFR INTL
Claim Number: FA1203001437446
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is CFR INTL (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmoffer.com>, registered with Godaddy Software, Inc.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2012; the National Arbitration Forum received payment on March 30, 2012.
On April 2, 2012, Godaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmoffer.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 April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@statefarmoffer.com. Also on April 3, 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 May 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
1) Complainant owns rights in the STATE FARM mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996).
2) Complainant has done business under the STATE FARM mark in the insurance and financial service industry since 1930.
3) Respondent registered the <statefarmoffer.com> domain name on March 29, 2008.
4) Respondent’s disputed domain name is confusingly similar to the STATE FARM mark.
5) Respondent’s domain name resolves to a website that contains links to Complainant’s competitors in the banking and insurance industries.
6) Respondent does not have license to use the STATE FARM mark.
7) Respondent had constructive knowledge of Complainant’s rights in the STATE FARM mark at the time it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known company that has been doing business under the name “State Farm” since 1930. Complainant engages in business in both the insurance and the financial services industry. Complainant owns rights in the STATE FARM mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996).
Respondent, CFR INTL, registered the <statefarmoffer.com> domain name on March 29, 2008. Respondent’s domain name resolves to a website that contains links to Complainant’s competitors in the banking and insurance industries.
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 owns rights in the STATE FARM mark through its many trademark registrations with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that the <statefarmoffer.com> domain name is confusingly similar to its STATE FARM mark. The domain name contains the entire STATE FARM mark and the generic term “offer,” as well as the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <statefarmoffer.com> domain name is confusingly similar to a complainant’s mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); 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.”).
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)
Respondent is not licensed to use Complainant’s STATE FARM mark. The WHOIS information for the disputed domain name identifies the registrant as “CFR INTL.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (The panel found that the respondent was not commonly known by the domain names when the WHOIS information and the other evidence on record did not support a finding that the respondent was commonly known by the domain names and the complainant did not give the respondent permission to register a domain name using the mark.); see also, In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006)( based on the WHOIS information as well as other submitted evidence, the respondent was not commonly known by the disputed domain name).
The Panel also finds that diverting Internet traffic to a web page that offers hyperlinks to Complainant’s competitors does not show 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (Respondent’s “diversionary use” of the complainant’s registered mark to reroute Internet users to a site displaying competitors’ hyperlinks was not a bona fide offering of goods or services.).
Respondent uses the <statefarmoffer.com> domain name to generate business on its own behalf by providing links for competitors of Complainant. The Panel presumes that Respondent’s use of the domain name generates a commercial profit. The Panel finds that Respondent’s registration of the disputed domain name to confuse Internet users and attract them to its own website for commercial gain is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel also finds that Respondent had actual knowledge of Complainant’s rights in the mark when Respondent registered the <statefarmoffer.com> domain name and that Respondent’s registration and use of the domain name was in bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmoffer.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 15, 2012
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