State Farm Mutual Automobile Insurance Company v. Chumchum Inc., c/o Albert Ovung
Claim Number: FA1209001461236
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Chumchum Inc. c/o Albert Ovung (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmquotes.org>, registered with Name.com, LLC (R1288-LROR).
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2012; the National Arbitration Forum received payment on September 5, 2012.
On September 5, 2012, Name.com, LLC (R1288-LROR) confirmed by e-mail to the National Arbitration Forum that the <statefarmquotes.org> domain name is registered with Name.com, LLC (R1288-LROR) and that Respondent is the current registrant of the name. Name.com, LLC (R1288-LROR) has verified that Respondent is bound by the Name.com, LLC (R1288-LROR) 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 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@statefarmquotes.org. Also on September 5, 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 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
a) Complainant contends that it has rights in the STATE FARM mark.
i. The mark is used in connection with insurance and financial information, including issuing quotes.
ii. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) trademark registrations for the STATE FARM mark (e.g., Reg. No. 1,979,585 registered June 11, 1996).
b) The <statefarmquotes.org> domain name is confusingly similar to the STATE FARM mark.
c) Respondent does not have rights or legitimate interests in the disputed domain name.
i. Respondent is not commonly known by the <statefarmquotes.org> domain name.
ii. The disputed domain name resolves to a website that includes links to a variety of insurance companies and products in competition with the offerings of Complainant.
d) Respondent registered and is using the <statefarmquotes.org> domain name in bad faith.
i. The <statefarmquotes.org> domain name is disruptive to Complainant’s business.
ii. 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its STATE FARM mark.
2. Respondent’s <statefarmquotes.org> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used 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.
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 contends that it has rights in the STATE FARM mark, which Complainant alleges it uses in connection with financial and insurance goods and services such as quotes. Complainant provides the Panel with evidence of its ownership of USPTO trademark registrations for the STATE FARM mark (e.g., Reg. No. 1,979,585 registered June 11, 1996). Regardless of the location of the parties, panels have held that the registration of a mark establishes rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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). Therefore, the Panel finds that Complainant has rights in the <statefarmquotes.org> domain name pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <statefarmquotes.org> domain name is confusingly similar to the STATE FARM mark. In Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panel held that the addition of a descriptive term to a mark in a domain name does not remove the domain name from the realm of confusing similarity. Additionally, the panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), found that deleting a space in a mark and adding a generic top-level domain (“gTLD”) are changes required of all domain names and thus have no bearing on a Policy ¶ 4(a)(i) decision. The Panel finds that Respondent’s addition of the descriptive term “quotes,” the deletion of the space in Complainant’s mark, and the addition of the gTLD “.org” are insufficient to differentiate the <statefarmquotes.org> domain name from the STATE FARM mark. Therefore, the Panel finds that Respondent’s <statefarmquotes.org> domain name is confusingly similar to the 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 contends that Respondent is not commonly known by the <statefarmquotes.org> domain name. Complainant notes that Respondent is not associated with Complainant or authorized by Complainant to use the STATE FARM mark. The Panel notes that the WHOIS record for the <statefarmquotes.org> domain name lists “Chumchum Inc., c/o Albert Ovung” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed 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 alleges that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant notes that the <statefarmquotes.org> domain name resolves to a website where Respondent displays links to competing goods and services. The Panel notes that these links are listed under such headings as “Auto Insurance Quote” and “Auto Insurance Quotes.” Therefore, the Panel finds that Respondent is not using the <statefarmquotes.org> domain name for either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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)).
Complainant contends that Respondent registered and is using the <statefarmquotes.org> domain name in bad faith. Complainant asserts that the disputed domain name is disruptive as it resolves to a website where Respondent displays links that offer goods and services in competition with those that Complainant offers. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel held that the display of competitive links via a disputed domain name is disruptive. Therefore, the Panel finds that Respondent registered and uses the <statefarmquotes.org> domain name disruptively, and thus in bad faith, under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent’s registration and use of the disputed domain name was intended to attract individuals seeking information on Complainant and to create customer confusion as to the source or sponsorship of the website. Complainant states that the <statefarmquotes.org> domain name resolves to a website that includes links to a variety of insurance companies and products in competition with the offerings of Complainant. Among the headings these links are listed under are “Auto Insurance Quotes” and “Alpaca Insurance.” The Panel finds that Respondent attempted to attract, for commercial gain, Internet users to the <statefarmquotes.org> domain name by creating a likelihood of confusion as to the source, sponsorship, or affiliation of Complainant to the disputed domain name. Therefore, the Panel finds that Respondent registered and is using the <statefarmquotes.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmquotes.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 15, 2012
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