State Farm Mutual Automobile Insurance Company v. Luce DiPietro
Claim Number: FA1206001450305
Complainant is State Farm Mutual Automobile Insurance Company (“Complain-ant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Luce DiPietro (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qrstatefarm.com>, registered with Wild West Domains, 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 June 25, 2012; the National Arbitration Forum received payment on June 25, 2012.
On June 25, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <qrstatefarm.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@qrstatefarm.com. Also on June 26, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 24, 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 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
Complainant owns the United States Patent and Trademark Office (“USPTO”) service mark registration for the STATE FARM mark (Reg. No. 1,979,585, regis-tered June 11, 1996), which it uses in connection with its marketing of financial and insurance-related goods and services.
Respondent registered the contested <qrstatefarm.com> domain name on Feb-ruary 26, 2012.
The domain name is confusingly similar to the STATE FARM mark.
Respondent has not been commonly known by the disputed <qrstatefarm.com> domain name.
Respondent does not have any intellectual property rights in the domain name.
Respondent is not authorized to sell Complainant’s products, or to engage in sponsorships or the marketing of services for or on behalf of Complainant, its affiliates or subsidiaries, and Respondent is not an independent contractor or agent of Complainant.
The disputed domain name resolves to a website that displays links to websites offering goods and services in the insurance industry in competition with the bus-iness of Complainant.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s operation of the <qrstatefarm.com> domain name is disruptive to Complainant’s business in that it is used to generate business for Respondent by diverting Internet users from Complainant’s website to that of Respondent.
Respondent registered and uses the <qrstatefarm.com> domain name in bad faith, all the while knowing of Complainant’s rights in the STATE FARM mark.
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 representa-tions 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 Vert-ical 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 service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark for purposes of the Policy through its national trademark registration).
Turning then to the central question under this head of the Policy, we conclude from our review of the record that Respondent’s <qrstatefarm.com> domain name is confusingly similar to the STATE FARM mark under Policy ¶ 4(a)(i). The domain name consists of Complainant’s entire mark, with the deletion of a space between the terms of the mark and the addition of the two extraneous characters (‘Qr”) and the generic top-level domain (“gTLD”) “.com.” These alterations of the STATE FARM mark, made in creating the disputed domain name, are insufficient to avoid a finding of confusing similarity under the standards of the Policy. 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. There-fore, the panel finds that the disputed domain name … is confus-ingly similar to the complainant’s … mark.
Similarly, the addition of the letters “qr” as a prefix to Complainant’s mark in form-ing the contested domain name does not avoid a finding of confusing similarity. See, for example, Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> was confusingly similar to a complainant’s registered service mark, KELSON).
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, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commen-taries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a 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 alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <qrstatefarm.com> domain name, that Respondent does not have any intellectual property rights reflecting the domain name, and that Respondent has not been authorized to act for, or on behalf of, Complainant. Moreover, the pertinent WHOIS record identifies the domain name registrant only as “Luce DiPietro,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <qrstatefarm.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was com-monly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <qrstatefarm.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, in that the domain name resolves to a website displaying links to the websites of Complainant’s competitors in the provision of financial and insurance-related goods and services. We are persuaded from the record that Respondent’s em-ployment of the contested domain name in the manner alleged in the Complaint is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See 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)).
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent registered and is using the <qrstatefarm.com> domain name in bad faith to disrupt Complainant’s business through the display of links to the websites of enterprises operating in competi-tion with Complainant. See, for example, Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. For-um July 24, 2006), the panel there finding that a display of com-peting links on a website resolving from a disputed domain name was disruptive to a complainant’s business and in bad faith under Policy ¶ 4(b)(iii).
We are further persuaded that the <qrstatefarm.com> domain name is meant to divert Internet users away from Complainant’s website so that Respondent may generate revenue impermissibly. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) in that Respondent attempts to attract Internet users to its resolving website, for its commercial gain, by creating a likelihood of confusion as to the possibility that Complainant is somehow associated with the domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's prior use of the … 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.’
Finally under this head of the Policy, the record amply demonstrates that Re-spondent knew of Complainant and its rights in the STATE FARM service mark prior to registration of the disputed domain name. This stands as additional evi-dence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration and use of a domain name where a respondent was "well-aware of” a complainant's mark at the time of its domain name registration).
For these reasons, 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 <qrstatefarm.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 6, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page