State Farm Mutual Automobile Insurance Company v. FMH INC. ADVERTISING
Claim Number: FA1206001450934
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is FMH INC. ADVERTISING (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmclaimdisputes.com>, registered with GoDaddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth 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 28, 2012, GoDaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmclaimdisputes.com> domain name is registered with GoDaddy Software, Inc. and that Respondent is the current registrant of the name. GoDaddy Software, Inc. has verified that Respondent is bound by the GoDaddy Software, 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 July 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@statefarmclaimdisputes.com. Also on July 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.
A timely Response was received and determined to be complete on July 20, 2012.
On July 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that:
1. The Complainant is a nationally (within the USA) known company that has been doing business under the name “STATE FARM” since 1930.
2. Complainant engages in business in both the insurance and the financial services industries under the STATE FARM mark.
3. Complainant owns trademark registrations for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996), and also has STATE FARM trademark registrations in Canada, Mexico and the European Union.
4. The <statefarmclaimdisputes.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
5. Respondent is not commonly known by the disputed domain name.
6. The <statefarmclaimdisputes.com> domain name resolves to a parked web page which contains click-through ads for various insurance companies and products, including companies in direct competition with Complainant.
7. Respondent knew or should have known that Complainant had rights in the STATE FARM mark prior to Respondent’s registration of the <statefarmclaimdisputes.com> domain name.
B. Respondent
The Respondent alleges that:
1. Respondent was unaware that advertising links were being displayed on its site, and that the registrar must have been responsible for placing such links on its site.
2. The disputed domain name is currently pointed to a placeholder page, pending Respondent’s development of the site.
3. Respondent registered the <statefarmclaimdisputes.com> domain name for eventual use as “a public service site for insured’s claims and disputes with their insurer.”
4. Respondent has never anticipated using the disputed domain name for personal gain, and does not currently receive income from its operation.
The Panel finds that the Complainant has established trademark rights in the STATE FARM trademark, represented by (among other registrations):
U.S. No. 1,979,585 STATE FARM, registered June 11, 1996.
The Respondent registered the disputed domain name <statefarmclaimdisputes.com> on March 12, 2012.
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.
The Complainant has presented the Panel with evidence of its trademark registrations for the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996).
The Panel finds that Complainant’s registrations with the USPTO establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). 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), see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that the <statefarmclaimdisputes.com> domain name is confusingly similar to its STATE FARM mark.
The Panel notes that the disputed domain name adds the descriptive terms “claim” and “disputes” to Complainant’s mark, which terms in fact can be said to make reference to Complainant’s insurance business.
The Panel also finds that the addition of these terms to Complainant’s trademark, does not create a unique, non-infringing domain name for the purposes of Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel further finds that the deletion of the space between words in Complainant’s mark is not relevant to confusingly similar analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Finally, the Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Respondent’s <statefarmclaimdisputes.com> domain name is confusingly similar to the STATE FARM trademark for the purposes of Policy ¶ 4(a)(i).
The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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.”).
The Complainant asserts that the Respondent is not commonly known by the <statefarmclaimdisputes.com> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant claims that Respondent is not associated with, affiliated with or sponsored by Complainant, and that Complainant did not authorize Respondent’s registration of the disputed domain name or use of Complainant’s mark for Respondent’s business purposes.
Additionally, the Panel notes that the WHOIS information for the disputed domain name identifies the domain name registrant as “FMH INC. ADVERTISING.” Based on the foregoing, the Panel concludes that Respondent is not commonly known by the <statefarmclaimdisputes.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Respondent claims to have registered the <statefarmclaimdisputes.com> domain name for eventual use as “a public service site for insured’s claims and disputes with their insurer,” however the Panel notes that the disputed domain name is in fact already in use - for a parked web page which contains click-through ads for various insurance companies and products, including companies in direct competition with Complainant. The Panel notes that previous panels have found the resolution of a confusingly similar domain name to a site featuring competing hyperlinks to be in accordance with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
The Panel finds that Respondent’s use of the disputed domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant alleges that Respondent’s registration and use of <statefarmclaimdisputes.com> constitutes a disruption of Complainant’s business and is evidence of bad faith pursuant to Policy 4(b)(iii). Complainant notes that the disputed domain name is being used to resolve to a website which features links to entities which provide insurance services in competition with Complainant.
The Panel finds that Respondent’s use of a confusingly similar domain name may draw Internet users seeking Complainant’s site to Respondent’s site, where visitors are presented with links to businesses in direct competition with Complainant.
The Panel also finds that Respondent’s registration and use of the <statefarmclaimdisputes.com> domain name disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
As stated above, the disputed domain name adds the descriptive terms “claim” and “disputes” to Complainant’s mark, which terms in fact can be said to make reference to Complainant’s insurance business. This is a further clear indication that the Respondent registered <statefarmclaimdisputes.com> with full knowledge of the Complainant’s trademark rights and business area.
Respondent contends that it played no part in directing the disputed domain name to a website featuring competing links, and that instead its registrar is using the disputed domain name as a placeholder page. Respondent further contends that it receives no income from its site. The Panel finds that Respondent is nonetheless responsible for the content displayed on its website, regardless of whether or not Respondent receives income from the operation of its site. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page).
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within Policy ¶ 4(a).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmclaimdisputes.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 8, 2012
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