State Farm Mutual Automobile Insurance Company v. JLC Technologies / Juliet Cruz
Claim Number: FA1206001450929
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is JLC Technologies / Juliet Cruz (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm-reminder.com>, registered with Name.com.
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 June 27, 2012; the National Arbitration Forum received payment on June 27, 2012.
On June 27, 2012, Name.com confirmed by e-mail to the National Arbitration Forum that the <statefarm-reminder.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com 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 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@statefarm-reminder.com. Also on June 29, 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 27, 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.
Complainant does business as an insurance and financial service company under the name STATE FARM. Complainant began using the STATE FARM mark in 1930 and registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 registered June 11, 1996), through which Complainant claims trademark rights. Complainant has expended substantial amounts of financial resources and time to develop the goodwill and reputation of its STATE FARM mark. Complainant does not permit unauthorized entities to use its mark in Internet domain names. Complainant developed its Internet presence in 1995 when it created a website at its <statefarm.com> domain name and uses the website to provide information regarding its agency and services.
Complainant became aware in March of 2012 that Respondent registered the <statefarm-reminder.com> domain name. The disputed domain name was created on March 16, 2012. See Exhibit 2. The disputed domain name resolves to a parked page containing advertisements for “sponsored links” from various companies, including competing insurance companies. See Exhibit 3. The <statefarm-reminder.com> domain name is confusingly similar to Complainant’s STATE FARM mark. Respondent has no rights or legitimate interests in the disputed domain name and is not associated with Complainant, nor does Respondent have permission to use the STATE FARM mark. Respondent makes no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not commonly known by the <statefarm-reminder.com> domain name. Respondent acted in bad Complainant’s business and generating business for competing entities. Respondent knew or should have known about Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent failed to file a Response.
1. Complainant has rights to its STATE FARM mark.
2. Respondent’s <statefarm-reminder.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 claims to own rights in the STATE FARM mark by virtue of its USPTO trademark registration (Reg. No. 1,979,585 registered June 11, 1996). The Panel determines that Complainant established rights in its STATE FARM mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant claims that the <statefarm-reminder.com> domain name is confusingly similar to its STATE FARM mark because of the inclusion of Complainant’s entire mark, regardless of “additional language, characters, or hyphens” added to the domain name. The Panel notes that the domain name includes a hyphen, the generic term “reminder,” and the generic top-level domain (“gTLD”) “.com.” The Panel also observes that the disputed domain name does not include the spaces between the words of the STATE FARM mark. The Panel concludes that the changes made to the <statefarm-reminder.com> domain name do not alter its confusing similarity to Complainant’s mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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 <statefarm-reminder.com> domain name and has never performed business under the domain name, nor does Respondent have any affiliation with Complainant. Complainant submits evidence showing that the WHOIS information identifies “Protected Domain Services” as the registrant. See Exhibit 2. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel determined that the respondent was not commonly known by the disputed domain name because no evidence existed to show that the respondent was commonly known by the domain name, including the WHOIS information, and complainant’s statement that the respondent was not licensed to use the complainant’s mark. The Panel concludes that Respondent is not commonly known by the <statefarm-reminder.com> domain name for the purposes of Policy ¶ 4(c)(ii), based on the WHOIS information and Complainant’s assertion that it did not grant Respondent permission to use the STATE FARM mark.
Complainant states that Respondent uses the <statefarm-reminder.com> domain name to host a website that includes hyperlinks to insurance companies that compete with Complainant’s business and that such use shows that Respondent has no rights or legitimate interest in the domain name. Complainant submits evidence showing a screenshot of the resolving webpage. See Exhibit 3. The Panel finds that Respondent’s use of the disputed domain name to post competing hyperlinks at the resolving website does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant alleges that Respondent registered the <statefarm-reminder.com> domain name to disrupt Complainant’s business by generating business on behalf of Complainant’s competition when potential customers view the links posted on the resolving website. The panel in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), stated that using a confusingly similar domain name to divert Internet users to a website containing commercial links to the complainant’s competition demonstrated bad faith registration and use. The Panel determines that Respondent’s use of the <statefarm-reminder.com> domain name disrupts Complainant’s business by referring Internet traffic to Complainant’s competitors and finds that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered the <statefarm-reminder.com> domain name with constructive or actual knowledge of Complainant’s rights in the STATE FARM mark. Complainant states that, because it registered its own <statefarm.com> domain name in 1995 and Respondent registered the disputed domain name in 2012, Respondent knew or should have known about Complainant’s long-term use of the STATE FARM mark. The Panel rejects a finding of bad faith grounded on Complainant’s allegation of constructive knowledge. The Panel determines that the content on Respondent’s webpage, displaying links to Complainant’s competitors, demonstrates that Respondent had actual knowledge of Complainant’s STATE FARM mark at the time it registered the <statefarm-reminder.com> domain name and find that Respondent’s actual knowledge is evidence of its bad faith registration 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 Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarm-reminder.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 10, 2012
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