national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Integrity Protection and Financial Group

Claim Number: FA1206001446856

 

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 Integrity Protection and Financial Group (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarminsurancestinks.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2012; the National Arbitration Forum received payment on June 1, 2012.

 

On June 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancestinks.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 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@statefarminsurancestinks.com.  Also on June 5, 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 August 3, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant’s contentions:

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

b)    Respondent’s <statefarminsurancestinks.com> domain name is confusingly similar to Complainant’s STATE FARM mark;

c)    Respondent is not commonly known by the disputed domain name;

d)    Respondent is not affiliated with Complainant in any way;

e)    Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services;

f)     Before receiving Complainant’s cease and desist letter, Respondent redirected the disputed domain name to a website offered at <damoreadjusters.com>;

g)    After receiving Complainant’s cease and desist letter, Respondent resolved the disputed domain name to a parked website offering links to Complainant’s competitors;

h)    Respondent knew or should have known of Complainant’s use of the STATE FARM mark when it registered the disputed domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its STATE FARM mark.

2.    Respondent’s <statefarminsurancestinks.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.

 

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

 

Complainant claims that registering the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996) established rights in the mark on behalf of Complainant.  Complainant submits multiple trademark certificates issued by the USPTO to support its claims.  See Complainant Exhibit 1.  Therefore, the Panel finds that Complainant established its rights in the STATE FARM  under Policy ¶ 4(a)(i) by registering the mark with the USPTO.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Complainant also claims that Respondent’s <statefarminsurancestinks.com> domain name is confusingly similar to Complainant’s STATE FARM mark.  The Panel notes that the disputed domain name includes the entire mark, while removing the space between terms and adding the generic term “stinks,” along with the generic top-level domain (“gTLD”) “.com.”  The Panel also notes that the disputed domain name adds the term “insurance,” which Complainant states is its primary product offering.  The Panel concludes that Respondent failed to sufficiently differentiate the disputed domain name from Complainant’s STATE FARM mark. The Panel finds that the <statefarminsurancestinks.com> domain name is confusingly similar to the mark under 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 Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).

 

 

Rights or Legitimate Interests

 

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 asserts that Respondent is not commonly known by the disputed domain name.  The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Integrity Protection and Financial Group.”  Complainant states that Respondent is not authorized to use the STATE FARM mark in any way.  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).

 

Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Before receiving Complainant’s cease and desist letter, Complainant contends that Respondent redirected the disputed domain name to a website offered at <damoreadjusters.com>.  Previous panels have found that resolving a disputed domain name to a competing website does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name.  See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).  Therefore, the Panel may find that 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).

 

After receiving Complainant’s cease and desist letter, Complainant claims that Respondent resolved the disputed domain name to a parked website offering links to Complainant’s competitors.  Complainant submits a printout from the resolving website to support its claim.  See Complainant’s Exhibit 3.2.  Based upon the printout provided, the Panel finds that Respondent’s current use does not qualify as 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 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)

 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent redirected the disputed domain name to a website offered at <damoreadjusters.com> before receiving Complainant’s cease and desist letter.  The Panel notes that the website includes links to insurance products and services.  Complainant states that, after Respondent received the cease and desist letter, Respondent resolved the disputed domain name to a parked website offering links to Complainant’s competitors, like Progressive and Allstate.  The Panel notes that in both cases the disputed domain name resolved and resolves to a website offering links to insurance services.  The Panel infers from this use that Respondent collects click-through fees from linked websites each time an Internet user clicks on one.  The Panel finds that Respondent is attempting to create confusion as to its affiliation with Complainant and then commercially gain from that confusion. The Panel  concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

Complainant also contends that Respondent knew or should have known of Complainant’s use of the STATE FARM mark when it registered the disputed domain name.  Complainant states that its STATE FARM mark is very well-known. Tthe Panel finds that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark when Respondent registered the disputed domain name the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").  However, the Panel notes that constructive knowledge alone does not support a finding of bad faith registration and use under this provision.  See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy.").

 

 

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 <statefarminsurancestinks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

  Dated:  August 17, 2012

 

 

 

 

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