State Farm Mutual Automobile Insurance Company v. A rajpoot
Claim Number: FA1204001441594
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is A rajpoot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <800statefarm.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2012; the National Arbitration Forum received payment on April 30, 2012.
On May 1, 2012, GoDaddy Software, Inc confirmed by e-mail to the National Arbitration Forum that the <800statefarm.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 May 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@800statefarm.com. Also on May 2, 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 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
Respondent’s <800statefarm.com> domain name, the domain name at issue, is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930. In 1999 Complainant opened a Federally Chartered Bank known as State Farm Bank and engages in both the insurance and the financial services industries. Complainant 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. Complainant asserts that the <800statefarm.com> domain name is confusingly similar to the STATE FARM mark and that Respondent is not commonly known by the <800statefarm.com> domain name. Complainant contends that the <800statefarm.com> domain name resolves to a website, which displays commercial links to insurance companies in direct competition with Complainant. The disputed domain name, Complainant contends, is disruptive to Complainant’s business. Complainant alleges that Respondent registered and began using the disputed domain name with the intent to attract Internet users to the <800statefarm.com> domain name by creating confusion as to the source or sponsorship of the <800statefarm.com> domain name. Finally, Complainant asserts that Respondent had knowledge of Complainant’s rights in the STATE FARM mark prior to its registration and use of the <800statefarm.com> domain name.
Respondent registered the <800statefarm.com> domain name on February 13, 2012. Complainant has not licensed or otherwise authorized Respondent to use its Mark and Respondent is not commonly known by the domain name at issue.
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 the STATE FARM mark, which is used in connection with insurance and financial services. Complainant owns USPTO trademark registrations for the STATE FARM mark (e.g., Reg. No. 1,979,585 registered June 11, 1996). The registration of a mark with a federal trademark authority is sufficient to demonstrate rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”). Therefore, Complainant has rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <800statefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark. Respondent’s addition of the number “800” fails to differentiate the <800statefarm.com> domain name from the STATE FARM mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that the respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the complainant’s mark). Additionally, Respondent’s deletion of space and the addition of the generic top-level domain (“gTLD”) “.com” are changes required of all domain names and thus not relevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also 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 therefore finds that the <800statefarm.com> domain name is confusingly similar to the STATE FARM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the <800statefarm.com> domain name. Respondent has no trademark or service mark rights in the domain name and has not registered the <800statefarm.com> domain name as a business name with the Secretary of State. Additionally, Respondent is not associated with Complainant or been granted authorization to use the STATE FARM mark in a domain name. The WHOIS record that Complainant provides lists “A rajpoot” as the domain name registrant. Therefore, Respondent is not commonly known by the <800statefarm.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s use of the <800statefarm.com> domain name is evidence of Respondent’s lack of rights and legitimate interests. The <800statefarm.com> domain name resolves to a website, which displays links to competitors in the insurance market. These links were transferred to a parked page after receiving a cease and desist letter from Complainant. The display of competing links on a disputed domain names is evidence of a lack of rights and legitimate interests due to not falling within the scope of Policy ¶¶ 4(c)(i) and 4(c)(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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry). Therefore, Respondent’s use of the <800statefarm.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The <800statefarm.com> domain name resolves to a website that displays links to Complainant’s competitors in the insurance industry. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panels held that a disputed domain name used to display competing links is disruptive to a complainant’s business. Therefore, Respondent’s use of the <800statefarm.com> domain name is disruptive, constituting evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent registered and is using the <800statefarm.com> domain name in order to create confusion as to the source or sponsorship of the disputed domain name. The <800statefarm.com> domain name is confusingly similar to the STATE FARM mark and thus creates confusion as to the source of the disputed domain name. Respondent’s display of links on the <800statefarm.com> domain name generates commercial revenue. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) since Respondent intended the registration of its <800statefarm.com> domain name to create confusion as to the source or sponsorship of the disputed domain name and then to use the disputed domain name take commercial advantage of Internet users’ mistakes made as a result of the confusion. 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent must have had constructive and/or actual notice of Complainant's rights in the STATE FARM mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <800statefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 5, 2012
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