State Farm Mutual Automobile Insurance Company v. ICS INC.
Claim Number: FA1204001441601
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is ICS INC. (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwstatefarmretire.com>, registered with eNom, 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.
Tyrus R. Atkinson, Jr., 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 April 30, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwstatefarmretire.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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@wwwstatefarmretire.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 Tyrus R. Atkinson, Jr., 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its STATE FARM mark
2. Respondent’s <wwwstatefarmretire.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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 asserts that it has registered the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). Complainant submits multiple trademark certificates issued by the USPTO to support its assertion. See Complainant’s Exhibit 1. The Panel notes that the certificates indicate that Complainant is the owner of record for the duly registered STATE FARM mark. Thus, the Panel concludes that Complainant has established its rights in the STATE FARM mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also B KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant also asserts that Respondent’s <wwwstatefarmretire.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the disputed domain name includes the entire mark, merely removing the space between terms and adding the generic term “retire,” the letters “www,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain name has not been sufficiently differentiated from Complainant’s STATE FARM mark. Pane concludes that the two are confusingly similar pursuant to Policy ¶ 4(a)(i). 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)); see also 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 Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar).
Complainant asserts that it has registered the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). Complainant submits multiple trademark certificates issued by the USPTO to support its assertion. See Complainant’s Exhibit 1. The Pane notes that the certificates indicate that Complainant is the owner of record for the duly registered STATE FARM mark. Thus, the Pane concludes that Complainant has established its rights in the STATE FARM mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also B KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant also asserts that Respondent’s <wwwstatefarmretire.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the disputed domain name includes the entire mark, merely removing the space between terms and adding the generic term “retire,” the letters “www,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain name has not been sufficiently differentiated from Complainant’s STATE FARM mark. The Panel concludes that the two are confusingly similar pursuant to Policy ¶ 4(a)(i). 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)); see also 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 Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar).
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.”).
Complainant argues that Respondent has never been known by the disputed domain name. Complainant states that it never authorized Respondent to use the STATE FARM mark. The Pane notes that the WHOIS information identifies the registrant of the disputed domain name as “ICS INC.” Based upon the evidence available, 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) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).
Complainant also argues that Respondent is not making a bona fide offering goods or services or a legitimate use of the disputed domain name. Although Complainant argues that the website previously resolved the disputed domain name to a different website, the Panel notes that both uses mentioned by Complainant include the same type of linked services, financial and insurance services. The Panel further notes that the submissions filed by Complainant to show the actual use of the disputed domain name are identical to one another and offer the same or similar links. Complainant states that these links resolve to competing businesses in the financial services industry. Thus, the Panel concludes that the Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant alleges that Respondent engaged in typosquatting when it crafted the <wwwstatefarmretire.com> domain name in its current form. The Panel notes that the disputed domain name actually includes an entire new word, rather than just the mark itself, effectively removing the disputed domain name from typosquatting analysis under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that the disputed domain name formerly resolved, and currently resolves, to a website offering links to financial and insurance companies. Complainant claims that the current use represents competing links while the previous use is different. However, the Panel notes that the submissions provided by Complainant indicate that the same type of links were offered in both instances. The Panel infers from this use that Respondent collects click-through fees for each Internet user it is able to divert to the linked websites. Complainant claims that Respondent is attempting to confuse Internet users into believing that Respondent is affiliated with Complainant in some way. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See 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).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant also contends that Respondent knew or should have known of Complainant’s rights in the STATE FARM mark when Respondent registered the disputed domain name. Complainant states that it registered the <statefarm.com> domain name on May 24, 1995, while Complainant alleges that Respondent registered the disputed domain name on January 9, 2012. While most UDRP panels believe constructive knowledge is not sufficient to support a finding of bad faith, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when Respondent registered the disputed domain name. The Panel finds that Respondent registered the disputed domain name in bad faith 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 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).
Complainant alleges that Respondent engaged in typosquatting when it crafted the <wwwstatefarmretire.com> domain name in its current form. The Panel notes that the disputed domain name actually includes an entire new word, rather than just the mark itself, effectively removing the disputed domain name from typosquatting analysis 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 <wwwstatefarmretire.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 7, 2012
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