State Farm Mutual Automobile Insurance Company v. Alan Corrado
Claim Number: FA1207001452102
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Alan Corrado (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmpremiere.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 known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2012; the National Arbitration Forum received payment on July 6, 2012.
On July 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmpremiere.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 July 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@statefarmpremiere.com. Also on July 12, 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 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
A late response was received and determined to be deficient on August 9, 2012. The response consisted of a single line email asking the Forum not to take the “URL” because the respondent is a State Farm agent who wants to use them for his business.
The Panel determines that the Response does not comply with Rules.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the STATE FARM mark. Complainant is the owner of a trademark registration for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996) with the United States Patent and Trademark Office (“USPTO”).
2. The <statefarmpremiere.com> domain name is confusingly similar to the STATE FARM mark. Respondent adds the generic term “premiere” and the generic top-level domain (“gTLD”) “.com” to the disputed domain name. Respondent deletes the space between words in Complainant’s mark in the disputed domain name.
3. Respondent does not have rights or legitimate interests in the <statefarmpremiere.com> domain name. Respondent is not commonly known by the disputed domain name. The disputed domain name resolves to a parked website which displays click-through links to insurance companies and products in direct relation to Complainant.
4. Respondent registered and is using the <statefarmpremiere.com> domain name in bad faith. The disputed domain name is disruptive to Complainant’s business. The disputed domain name is intended to attract individuals seeking information on State Farm and to create customer confusion as to the source or sponsorship of the website.
5. Respondent knew or should have known of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent submitted a deficient response that did not comply with the Rules.
Complainant holds trademark rights in the STATE FARM mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the domain name <statefarmpremiere.com> and that Respondent registered and uses 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.
Complainant contends that it has rights in the STATE FARM mark. Complainant notes that it uses its mark in connection with financial and insurance goods and services. Complainant provides evidence that it is the owner of a trademark registration for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996) with the USPTO. A federal trademark registration establishes rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant argues next that the <statefarmpremiere.com> domain name is confusingly similar to the STATE FARM mark. Complainant states that Respondent makes the following changes to the mark in the disputed domain name: the addition of the generic term “premiere;” the addition of the generic top-level domain (“gTLD”) “.com;” and the removal of the space between words in Complainant’s mark in the domain name. The addition of a generic term does not negate a finding of confusing similarity. 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 addition of a gTLD and deletion of spaces, required elements in all domain names, fail to make any impact on a Policy ¶ 4(a)(i) determination. 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)). Therefore, the Panel finds that Respondent’s <statefarmpremiere.com> domain name is confusingly similar to the STATE FARM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <statefarmpremiere.com> domain name. According to Complainant, Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent has never been known by or performed business under the disputed domain name and that Complainant did not authorize Respondent to register the disputed domain name or to use the STATE FARM mark. The WHOIS record for the <statefarmpremiere.com> domain name lists “Alan Corrado” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <statefarmpremiere.com> domain name pursuant to Policy ¶ 4(a)(i). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant next alleges that the use of the disputed domain name does not fall within the protective realm of Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant states that the disputed domain name resolves to a parked website which displays click-through links to insurance companies and products in direct competition with Complainant. Complainant’s Exhibit 3 demonstrates that these links are displayed under headings such as “Group Auto Insurance” and “Apartment Property Ins.” In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel held that the display of competing links is not a use which gives a respondent rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that Respondent’s use of the <statefarmpremiere.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <statefarmpremiere.com> domain name in bad faith. Complainant asserts that the disputed domain name is disruptive to Complainant’s business. According to Complainant, the disputed domain name resolves to a parked website which displays links to Complainant’s competitors. The registration of a confusingly similar domain name which displays links to a complainant’s competitors is demonstrative of disruption. 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)). Therefore, the Panel finds that Respondent registered and is using the <statefarmpremiere.com> domain name in bad faith due to its disruptive nature under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s bad faith is further demonstrated because the disputed domain name is intended to attract individuals seeking information on Complainant and create customer confusion as to the source or sponsorship of the website. Complainant notes that the <statefarmpremiere.com> domain name resolves to a parked website where links are displays for insurance and related goods and services in direct competition with Complainant. Complainant asserts that Respondent benefits monetarily from the <statefarmpremiere.com> domain name. The Panel finds that Respondent intentionally attracts, for commercial gain, Internet users to the <statefarmpremiere.com> domain name by creating a likelihood of confusion as to the source of the <statefarmpremiere.com> domain name. Therefore, the Panel finds that Respondent registered and is using the <statefarmpremiere.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> 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.’”).
Complainant lastly argues that Respondent knew of Complainant’s rights in the STATE FARM mark prior to its registration of the <statefarmpremiere.com> domain name. Complainant asserts that this is because of Complainant’s long-term trademark registration of the STATE FARM mark with the USPTO. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmpremiere.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 15, 2012
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