national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Private Registration / WhoisGuardService.com

Claim Number: FA1204001437533

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company   (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <creditcardstatefarm.com>, registered with Nanjing Imperiosus Technology Co. Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 2, 2012. The Complaint was submitted in both Chinese and English.

 

On April 5, 2012, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <creditcardstatefarm.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name.  Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. 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 11, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 1, 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@creditcardstatefarm.com.  Also on April 11, 2012, the Chinese language 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 3, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

          Complainant makes the following contentions:

1.    Complainant is a nationally known company that has been doing business under the STATE FARM name since 1930.

2.    Complainant has registered its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 registered June 11, 1996).

3.    Respondent registered the <creditcardstatefarm.com> domain name on June 29, 2011.

4.    The disputed domain name resolves to a web page that contains numerous links for various products and companies, including insurance companies in direct competition with Complainant.

5.    The disputed domain name is confusingly similar to Complainant’s STATE FARM mark.

6.    Respondent is not associated with, affiliated with, or sponsored by Complainant and is not commonly known by the <creditcardstatefarm.com> domain name.

7.    Respondent is not authorized by Complainant to use the STATE FARM mark.

8.    Respondent registered the disputed domain name to create the impression of association with Complainant and to attract individuals seeking information on Complainant.

9.    Respondent’s use of the disputed domain name to direct Internet users to a website filled with links for various products and companies, including Complainant’s competitors, reflects bad faith.

10. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant is a nationally known United States company that has been doing business under the STATE FARM name since 1930.

2. Complainant has registered its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 registered June 11, 1996).

3. Respondent registered the <creditcardstatefarm.com> domain name on June 29, 2011.

4. The disputed domain name resolves to a web page that contains numerous links for various products and companies, including insurance companies in direct competition with Complainant.

 

PRELIMINARY MATTER:  LANGUAGE OF THE PROCEEDING

 

Pursuant to Paragraph 11(a) of the Rules, the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights to a trademark or service mark. Complainant alleges that it has rights in the STATE FARM mark because it has been doing business under the STATE FARM name since 1930 and has registered the STATE FARM mark with the USPTO (Reg. No. 1,979,585 registered June 11, 1996).  Prior panels have held that a USPTO trademark registration is sufficient to prove a complainant’s rights in a mark, even when the respondent is not located in the U.S. See 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); 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). The Panel therefore concludes that Complainant has proven it owns rights in the STATE FARM mark pursuant to Policy ¶ 4(a) (i).

 

The second question is whether Respondent’s <creditcardstatefarm.com> domain name is identical or confusingly similar to the STATE FARM mark.

Complainant submits that Respondent’s <creditcardstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark and the Panel agrees with that submission. The Panel notes that the disputed domain name differs from Complainant’s mark only in the addition of the generic terms “credit” and “card,” the removal of the space between terms, and the generic top-level domain (“gTLD”) “.com.” The Panel determines that neither added generic words nor an attached gTLD has any effect on differentiating a disputed domain name from a mark and this has frequently been held in previous UDRP decisions. In particular, the objective internet user would assume that the disputed domain name referred to credit card facilities available at  Complainant’s business or another business conducted under the STATE FARM mark  See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis). The Panel also finds that removing a space does not distinguish the disputed domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel accordingly holds that Respondent’s <creditcardstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a) (i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s STATE FARM mark trademark and to use it in its domain name, creating the likelihood that internet users would assume that it was an official domain name of Complainant  referring to credit card facilities available at  Complainant’s business or another business conducted under the STATE FARM mark and that , if used, it would lead to an official website of Complainant;

 

(b)  Respondent has then used the domain name to resolve to a website which in turn carries links to a wide variety of goods and services, including insurance companies that compete with Complainant;

 

(c) Respondent has clearly engaged in these activities without the consent or authority of Complainant;                                    

 

(d) Complainant argues that Respondent is not associated with, affiliated with, or sponsored by Complainant. Complainant alleges that it did not authorize Respondent to register the disputed domain name or use the mark for Respondent’s business purposes. Complainant asserts that Respondent is not commonly known by the <creditcardstatefarm.com> domain name and does not possess independent intellectual property rights in the name. The Panel notes that according to the WHOIS information provided by Complainant, the registrant of the disputed domain name is “Private Registration / WhoisGuardService.com.” Based on Complainant’s allegations and supporting evidence, the Panel determines that Respondent is not commonly known by the disputed domain name according 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).

 

(e) Complainant also contends that Respondent’s <creditcardstatefarm.com> domain name directs Internet users to a web page that contains numerous links for various products and companies, including insurance companies in competition with Complainant. As a result, Complainant asserts that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Prior UDRP panels have determined that using a disputed domain name to host a listing of links to third-party companies, including competitors, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)).

 

All of these matters go to make out the prima facie case against Respondent. 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.

 

Registration and Use in Bad Faith

 

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 has 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.

 

Having regard to those principles, the Panel finds that Complainant registered and has used the disputed domain name in bad faith. That is so for the following reasons.

 

First, Complainant submits that it is clear that Respondent registered the confusingly similar <creditcardstatefarm.com> domain name to attract individuals seeking information about Complainant and create consumer confusion as to the source or sponsorship of the website. Complainant argues that, while Respondent’s disputed domain name gives the impression that interested individuals will receive information regarding Complainant, the disputed domain name instead directs Internet users to a website filled with links advertising third-party companies, some of which are in competition with Complainant. As the Panel finds that Respondent must be presumed to make commercial gains from the operation of its resolving website and its efforts to attract and confuse consumers, the Panel concludes that Respondent registered and used the disputed domain name in bad faith under 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iv).”).

 

Secondly, Complainant also contends that Respondent registered the disputed domain name on June 29, 2011, long after Complainant’s registration of its own domain name, <statefarm.com> and Complainant’s registration of its STATE FARM trademark. As a result, Complainant argues that Respondent knew or should have known of Complainant’s rights in the mark. Although previous panels have declined to base a finding of bad faith on constructive knowledge alone, the Panel determines that Respondent had actual knowledge of Complainant’s mark. Accordingly, the Panel finds bad faith registration under Policy ¶ 4(a) (iii). See Nat’l Patent Servs., Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) (“[C]onstructive notice does not support a finding of bad faith registration.”); see also Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”). 

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the STATE FARM mark, preceding it with the words “credit” and “card” and thereby invoking a typical service offered by companies such as Complainant and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <creditcardstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  May 5, 2012

 

 

 

 

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