State Farm Mutual Automobile Insurance Company v. WP-3 / whoisproxy.com Ltd
Claim Number: FA1208001457793
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is WP-3 / whoisproxy.com Ltd (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rickstatefarm.com>, registered with AZ.pl, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2012; the National Arbitration Forum received payment on August 13, 2012.
On August 14, 2012, AZ.pl, Inc. confirmed by e-mail to the National Arbitration Forum that the <rickstatefarm.com> domain name is registered with AZ.pl, Inc. and that Respondent is the current registrant of the name. AZ.pl, Inc. has verified that Respondent is bound by the AZ.pl, 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 August 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@rickstatefarm.com. Also on August 14, 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 September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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:
1. Respondent’s <rickstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <rickstatefarm.com> domain name.
3. Respondent registered and used the <rickstatefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for its STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996). The well-known mark is used in connection with insurance and financial services.
Respondent registered the <rickstatefarm.com> domain name on December 20, 2011, and uses it to offer information about auto insurance and to provide links to auto insurance quotes from companies in direct competition with Complainant.
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.”).
The Panel finds that Complainant has rights in the STATE FARM mark through its trademark registration with the USPTO. In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panel held that a USPTO registration of a mark is sufficient to establish rights under Policy ¶ 4(a)(i). Also, in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel found that rights in a mark satisfy Policy ¶ 4(a)(i) regardless of whether the respondent at issue lives outside of the jurisdiction in which the mark is registered.
Respondent’s <rickstatefarm.com> domain name is confusingly similar to the STATE FARM mark, as it merely adds the generic term “rick” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. In Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), the panel found that the addition of a generic term fails to differentiate a disputed domain name from the mark incorporated within it. Further, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel determined that the deletion of spaces from a mark and the addition of a gTLD are irrelevant to an analysis of confusing similarity. Thus, the Panel finds that the changes Respondent made to the STATE FARM mark in the <rickstatefarm.com> domain name are insubstantial and the domain name is confusingly similar to Complainant’s STATE FARM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
According to Complainant, Respondent has never been known by, or conducted business under, the <rickstatefarm.com> domain name. Complainant states that Respondent is not associated with Complainant and has not been authorized to use the mark. The WHOIS record for the disputed domain name lists “WP-3 / whoisproxy.com Ltd” as the domain name registrant, which bears no resemblance to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <rickstatefarm.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).
Complainant argues that Respondent’s use of the <rickstatefarm.com> domain name is further evidence of Respondent’s lack of rights and legitimate interests. Complainant asserts that the disputed domain name resolves to a website that purports to be a blog offering information about auto insurance, and providing links to auto insurance quotes from companies in direct competition with Complainant. In ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panel held that the use of a disputed domain name to display competitive links does not fall within the protected bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <rickstatefarm.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 that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <rickstatefarm.com> domain name resolves to website purporting to offer competing information and displaying a multitude of links to Complainant’s competitors in the auto insurance industry, disrupting Complainant’s business. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel held that the display of links to competitors is strong evidence of bad faith. Thus, the Panel finds that the <rickstatefarm.com> domain name was registered and is used in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s bad faith is further evidenced by its attempt to cause confusion so as to profit from the <rickstatefarm.com> domain name. The disputed domain name resolves to a website where Respondent displays links to Complainant’s direct competitors. Complainant contends that the <rickstatefarm.com> domain name is used to trade off of the goodwill associated with the STATE FARM mark and to cause confusion for Internet users by creating the impression of association with Complainant. The Panel agrees and finds that Respondent has attempted to attract, for commercial gain, Internet users to the <rickstatefarm.com> domain name by creating a likelihood of confusion as to its association with Complainant, 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).
Complainant alleges that Respondent knew or should have known of Complainant's rights in the STATE FARM mark prior to registration of the disputed domain name. The Panel agrees and concludes that Respondent had actual notice of Complainant's well-known mark and thus registered 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 where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that 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 <rickstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 18, 2012
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