State Farm Mutual Automobile Insurance Company v. PrivacyProtect.org / Domain Admin
Claim Number: FA1209001461141
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comstatefarm.com>, registered with REGISTERMATRIX.COM CORP.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2012; the National Arbitration Forum received payment on September 4, 2012.
On September 6, 2012, REGISTERMATRIX.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <comstatefarm.com> domain name is registered with REGISTERMATRIX.COM CORP. and that Respondent is the current registrant of the name. REGISTERMATRIX.COM CORP. has verified that Respondent is bound by the REGISTERMATRIX.COM CORP. 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 September 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@comstatefarm.com. Also on September 7, 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 October 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <comstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <comstatefarm.com> domain name.
3. Respondent registered or used the <comstatefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant began using the STATE FARM mark in 1930, and registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,979,575 registered June 11, 1996).
2. Complainant also owns trademark registrations with the Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 554,874 registered April 30, 1996), and Europe’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 0001758448 registered June 18, 1998).
3. Complainant uses the STATE FARM mark in its business as an insurance, fire, and casualty company. Complainant owns the <statefarm.com> domain name, and offers information regarding its insurance and financial service products at the resolving website.
4. The <comstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
5. Respondent is not commonly known by the disputed domain name and does not have any contractual arrangement with Complainant that would authorize it to offer services under Complainant’s mark.
6. Respondent registered the <comstatefarm.com> domain name in bad faith due to the disruptive nature of Respondent’s use of the domain name and its attempt to confuse consumers and profit from the confusion.
7. Respondent knew or should have known of Complainant’s long-term use of and rights in the STATE FARM mark when Respondent registered the infringing domain name.
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 asserts its rights in the STATE FARM mark through trademark registrations with multiple government agencies, including the USPTO (e.g. Reg. No. 1,979,575 registered June 11, 1996), the MIIP (Reg. No. 554,874 registered April 30, 1996), and OHIM (Reg. No. 0001758448 registered June 18, 1998). The Panel finds that Complainant’s various trademark registrations establish its rights in the STATE FARM mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). The Panel further concludes that Policy ¶ 4(a)(i) does not compel Complainant to register its mark in the country of Respondent’s residence in order to establish rights in the mark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The Panel observes that Complainant makes only one argument that the <comstatefarm.com> domain name is confusingly similar to its STATE FARM mark, stating that the domain name includes the STATE FARM mark. The Panel notes that the domain name uses the mark in its entirety, removes the space between the words, adds the prefix “com,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the changes made to the <comstatefarm.com> domain name do not eliminate confusing similarity between the domain name and Complainant’s mark under Policy ¶ 4(a)(i). 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).”); see also 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)); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s disputed domain name is confusinlgy similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
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 claims that Respondent has no rights or legitimate interests in the <comstatefarm.com> domain name because Respondent is neither affiliated with Complainant nor is Respondent commonly known by the disputed domain name. The Panel notes that the WHOIS information for the <comstatefarm.com> domain name identifies “PrivacyProtect.org / Domain Admin” as the registrant, and determines that the lack of supporting evidence demonstrates that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant contends in its Policy ¶ 4(a)(iii) section that Respondent uses the <comstatefarm.com> domain name to host a website that lacks any connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provides evidence of a screenshot of the resolving website that displays hyperlinks to various competing insurance companies. See Exhibit 3. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), found that the respondent’s use of the disputed domain name to post links to third-party websites showed the respondent was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel determines that Respondent’s use of the resolving website to offer Internet users hyperlinks to competing entities does not demonstrate 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).
Complainant argues that Respondent disrupts its business by its use of the <comstatefarm.com> domain name to feature links to commercial websites that compete with Complainant. The Panel finds that the resolving website disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use pursuant to 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)).
Complainant contends that Respondent uses the disputed domain name that is confusingly similar to Complainant’s STATE FARM mark to attract individuals looking for Complainant’s business online. The Panel notes that Complainant provides screenshots of Respondent’s website, which features hyperlinks to competing entities’ websites, and the Panel infers that offering competing click-through hyperlinks generates revenue for Respondent. The Panel concludes that by attempting to confuse consumers and attract Internet traffic to its website in order to make a profit, Respondent engages in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant asserts that Respondent knew or should have known about Complainant’s prior use of and trademark rights in the STATE FARM mark. The Panel notes that Complainant’s trademark registration in 1996 predates Respondent’s domain name registration in 2012, demonstrating Respondent’s constructive knowledge in the STATE FARM mark; however, the Panel determines that it will not find bad faith registration by Respondent based only on constructive knowledge. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith). The Panel finds that the competing hyperlinks on Respondent’s resolving website are evidence of Respondent’s actual knowledge of Complainant’s rights in the STATE FARM mark, and concludes that Respondent’s actual knowledge demonstrates its bad faith registration of the <comstatefarm.com> domain name under Policy ¶ 4(a)(iii). See 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 not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 15, 2012
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