State Farm Mutual Automobile Insurance Company v. Angela Nguyen
Claim Number: FA1205001446689
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Angela Nguyen (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsurancephonenumber.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 31, 2012; the National Arbitration Forum received payment on May 31, 2012.
On June 1, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbi-tration Forum that the <statefarminsurancephonenumber.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@statefarmInsurancephonenumber.com. Also on June 4, 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 July 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 began operating its insurance business under the STATE FARM mark in 1930, and under its STATE FARM INSURANCE mark in 1979.
Complainant owns a service mark registration for the STATE FARM INSUR-ANCE mark, on file with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,125,010, registered September 11, 1979).
Respondent registered the disputed domain name on July 5, 2011.
The <statefarminsurancephonenumber.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not associated with, affiliated with, or sponsored by Complainant.
Respondent is not authorized to use Complainant’s STATE FARM INSURANCE mark, and Respondent does not own an intellectual property rights in the disput-ed domain name.
The <statefarminsurancephonenumber.com> domain name resolves to a website that contains extensive and incoherent text, some of which relates to Complain-ant’s business.
Respondent knew of Complainant’s rights in the STATE FARM INSURANCE mark when it registered, and while it has used, the contested domain name.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 represent-ations 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 INSURANCE service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Turning then to the central question under Policy ¶ 4(a)(i), we conclude that the <statefarminsurancephonenumber.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE service mark. The domain name contains Complainant’s entire mark, absent only the spaces between its terms, and includes the generic terms “phone” and “number,” along with the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, are insufficient to distinguish the domain name from the mark under the standards of the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elim-ination of spaces between terms of the mark of another and the addition of a gTLD in forming a domain name do not establish distinctiveness from that mark under Policy ¶ 4(a)(i)). This is because spaces are not permitted in domain names and a gTLD is required in all domain names.
Similarly, the addition of generic terms to Complainant’s mark in creating the contested domain name does not distinguish the domain name from the mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that the addition of generic terms to a complainant’s HARRY POTTER mark in a respondent’s domain names <shop4harrypotter.com> and <shopforharrypotter.com> failed to avoid confusing similarity between the mark and the domain names).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741-828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that the respondent lacks rights to and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent is not associated with, affiliated with, or sponsored by Com-plainant, that Respondent is not authorized to use Complainant’s STATE FARM INSURANCE mark, and that Respondent does not own an intellectual property rights in the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Angela Nguyen,” which does not resemble the domain name. On this record, we must conclude that Respondent is not commonly known by the contested domain name pur-suant to Policy ¶ 4(c)(ii). See, for example, IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to estab-lish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark, and where it failed to submit evidence that it was commonly known by the disputed domain name).
We next observe that Complainant contends, without objection from Respondent, that the <statefarmInsurancephonenumber.com> domain name resolves to a website that contains extensive and incoherent text, some of which relates to Complainant’s business. While the objective of Respondent’s use of the domain name is unclear, it is evident that this is not a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the do-main name under Policy ¶ 4(c)(iii). See, for example, U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that a respondent’s use of a complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are satisfied from the record that Respondent registered and uses the <statefarminsurancephonenumber.com> domain name to cause confusion among Internet users. Respondent’s website, which resolves from a domain name that is confusingly similar to Complainant’s STATE FARM INSURANCE service mark, contains text relating to Complainant’s business. This creates confusion among Internet users as to the possibility of Complainant’s affiliation with the disputed domain name, and thus stands as evidence of bad faith regis-tration and use of the domain name under Policy ¶ 4(b)(iv). See, for example, Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith registration and use of a domain name, where that domain name was obviously connected with a complainant’s well-known marks).
Moreover, it is inconceivable that Respondent could have registered the <statefarminsurancephonenumber.com> domain name without knowing of Complainant's rights in the mark. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a complainant's rights in the UNIVISION mark when registering the domain name).
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <statefarminsurancephonenumber.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 16, 2012
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