State Farm Mutual Automobile Insurance Company v. ICS INC.
Claim Number: FA1210001466922
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmfederalcreditunion.com>, registered with Tucows, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 11, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmfederalcreditunion.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 October 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@statefarmfederalcreditunion.com. Also on October 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 November 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has rights in the STATE FARM mark, used in connection with insurance and financial services. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996).
The <statefarmfederalcreditunion.com> domain name is confusingly similar to the STATE FARM mark.
Respondent is not commonly known by the <statefarmfederalcreditunion.com> domain name.
The disputed domain name resolves to a website where Respondent displays click-through links to websites of competitors of Complainant in the insurance and financial services industry.
The disputed domain name is disruptive to Complainant’s business.
Respondent registered the disputed domain name to take commercial advantage of Internet users’ mistakes.
Respondent registered the <statefarmfederalcreditunion.com> domain name having known or should have known of Complainant’s rights in the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO trademark registration for its STATE FARM mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the STATE FARM mark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by the at-issue domain name displays click-through links to websites of Complainant’s competitors.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the STATE FARM mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located in outside of the USPTO’s jurisdiction. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The at-issue domain is made up of Complainant’s entire mark, without the space, while adding the generic terms “federal,” “credit,” and “union,” and appending the top-level domain “.com.” These inconsistencies between the domain and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s STATE FARM trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), (holding that the addition of descriptive or generic terms did not remove a disputed domain name from the realm of confusing similarity); See also. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), (finding that spaces and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS record for the disputed domain name lists “ICS INC.” as the domain name registrant. Furthermore, there is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <statefarmfederalcreditunion.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s use of the <statefarmfederalcreditunion.com> domain name does nothing to demonstrate Respondent’s rights or legitimate interests in respect of the at-issue domain name. The <statefarmfederalcreditunion.com> domain name addresses a website where Respondent displays click-through links to Complainant’s competitors in the insurance and financial services industry. Such links are listed under headings such as “Official NewsGator Site” and “Progressive Car Insurance.” Using the domain name in this manner 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). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), (holding that Policy ¶¶ 4(c)(i) and 4(c)(iii) does not provide rights or legitimate interests to respondents using a disputed domain name to promote competitive links).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above, Respondent’s domain name addresses a website that displays links to Complainant’s competitors. Using the domain name in this manner is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii) and thereby demonstrates Respondent bad faith registration and use of the at-issue domain name under Policy ¶4(a)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), (determining that the display of links to a complainant’s competitors via a disputed domain name is disruptive to the complainant’s business).
Additionally and as also mentioned above, Internet users who reach the <statefarmfederalcreditunion.com> website are faced with a list of links to websites in the insurance and financial services industry that offer goods and services in competition with those that Complainant offers under the STATE FARM mark. These circumstances make it apparent that Respondent registered the confusingly similar domain name to create the impression of an association with Complainant, to trade off the good will associated with Complainant’s STATE FARM mark, and to create initial interest confusion for individuals looking for information about Complainant and its goods and services. Respondent’s attempt to attract, for commercial gain, Internet users to the <statefarmfederalcreditunion.com> domain name by creating a likelihood of confusion with Complainant and its mark shows Respondent registered and is using the <statefarmfederalcreditunion.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, it is apparent, given the effect of Complainant’s long-standing trademark rights in, and long-term use of, the STATE FARM mark, and given the manner in which Respondent uses the confusingly similar domain name, that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark prior to registering <statefarmfederalcreditunion.com>. The STATE FARM mark is well-known worldwide. The <statefarmfederalcreditunion.com> website is used to trade on Complainant’s goodwill and links to Complainant’s competition. It would have thus been inconceivable for Respondent to not have known of Complainant and its STATE FARM trademark when Respondent registered the at-issue domain name. Indeed, Respondent’s desire to impermissibly trade on Complainant’s STATE FARM mark and benefit from Complainant’s goodwill therein is obviously the reason why Respondent registered the confusingly similar domain name. Importantly, Respondent’s prior knowledge of Complainant’s trademark rights in STATE FARM is sufficient to support a finding of bad faith registration and use 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmfederalcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 14, 2012
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