State Farm Mutual Automobile Insurance Company v. David Robertson
Claim Number: FA1207001453520
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is David Robertson (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmwelcomecenter.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2012; the National Arbitration Forum received payment on July 16, 2012.
On July 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmwelcomecenter.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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@statefarmwelcomecenter.com. Also on July 17, 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 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
Respondent’s <statefarmwelcomecenter.com> domain name, the domain name at issue, is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. The mark is used in connection with insurance and financial services. Complainant owns the United States Patent and Trademark Office (“USPTO”) registration for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1995). Respondent is not commonly known by the disputed domain name and has not been authorized by Complainant to use the name to register a domain. The <statefarmwelcomecenter.com> domain name resolves to a website which contains click-through ads for various insurance companies/products including those in direct competition with Complainant. Respondent’s offer to sell the disputed domain name for profit reflects bad faith. Respondent registered the disputed domain name to create the impression of association with Complainant, to trade off the goodwill associated with the STATE FARM mark, and to create initial interest confusion for individuals looking for information about Complainant. Respondent knew or should have known of Complainant’s rights in the STATE FARM mark when the disputed domain name was registered. Respondent registered the <statefarmwelcomecenter.com> domain name on June 16, 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.
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 has rights in the STATE FARM mark. The mark is used in connection with insurance and financial services and Complainant owns the USPTO registration for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1995). Therefore, Complainant has rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i). 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).
Respondent’s <statefarmwelcomecenter.com> domain name is confusingly similar to the STATE FARM mark. In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel found that the addition of generic terms, such as “welcome” and “center” in the instant dispute, does not negate a finding of confusing similarity. In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), the panel held that the addition of a generic top-level domain (“gTLD”) and the deletion of spaces are not changes which remove a disputed domain name from the realm of confusing similarity. Therefore, Respondent’s <statefarmwelcomecenter.com> domain name is confusingly similar to the STATE FARM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not associated with, affiliated with or sponsored by Complainant and Complainant did not authorize Respondent to register the domain name or to use the STATE FARM mark. Further, Respondent has never been known by or performed business under the domain name at issue, does not possess independent intellectual property rights in the name, and does not have a contractual arrangement that would allow Respondent to offer services under the STATE FARM mark. The WHOIS record lists “David Robertson” as the domain name registrant. Therefore, Respondent is not commonly known by the <statefarmwelcomecenter.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).
Respondent’s use of the <statefarmwelcomecenter.com> domain name is further evidence of a lack of rights and legitimate interests. The domain name resolves to a website which contains click-through ads for various insurance companies/products including those in direct competition with Complainant. The use of a domain name to display competing links is not a use that gives the respondent rights or legitimate interests. 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, Respondent’s use of the <statefarmwelcomecenter.com> domain name is 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant asserts that, in an e-mail response to a cease and desist letter, Respondent noted that he would be open to selling the domain name. A later e-mail from Respondent requested $500 for the disputed domain name. In Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the Panel held that the respondent’s bad faith was evidenced by its offer to sell the disputed domain name. Therefore, the Panel finds that Respondent registered and is using the <statefarmwelcomecenter.com> domain name in bad faith under Policy ¶ 4(b)(i).
The <statefarmwelcomecenter.com> domain name resolves to a parked website which displays links to the websites of competitors of Complainant. Respondent registered the disputed domain name to create the impression of an association with Complainant, to trade off the goodwill associated with the STATE FARM mark, and to create initial interest confusion for individuals looking for information about Complainant. Respondent registered the <statefarmwelcomecenter.com> domain name in an attempt to attract Internet users for commercial gain by creating a likelihood of confusion. Therefore, Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Due to Complainant’s long-term use of the registered STATE FARM mark, Respondent knew or should have known of Complainant's rights in the mark when Respondent registered the disputed domain name. Some panels have held that constructive knowledge is not enough evidence of bad faith. 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."). However, here, the Panel agrees with Complainant regarding Respondent's actual knowledge, and thus concludes that Respondent registered the <statefarmwelcomecenter.com> domain name in bad faith according to 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).").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmwelcomecenter.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 9, 2012
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