State Farm Mutual Automobile Insurance Company v. master plumbing
Claim Number: FA1210001466938
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is master plumbing (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmplumber.com>, registered with GoDaddy.com, Inc.
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.
Calvin A. Hamilton 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 15, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmplumber.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@statefarmplumber.com. Also on October 16, 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.
A timely Response was received and determined to be complete on October 18, 2012.
On October, 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
1. Respondent registered the disputed domain name with no intentions of publishing or advertising the name.
2. Respondent intended the domain name to be used as a landing page within Respondent’s own site.
3. Respondent did not know that the domain name would be an issue when it purchased it from GoDaddy.com.
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.
Complainant asserts that it owns the STATE FARM family of trademarks with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). Complainant contends that it uses the STATE FARM marks in conjunction with insurance and financial services. The Panel determines that Complainant’s trademark registrations with the USPTO, as evidenced in Exhibit 1, is sufficient for Complainant to have rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant also asserts that Respondent’s <statefarmplumber.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the disputed domain name includes Complainant’s entire STATE FARM mark, absent the space between the terms of the mark, while also including the generic term “plumber” and the generic top-level domain (“gTLD”) “.com.” Previous UDRP panels have found that such changes are not sufficient to distinguish a disputed domain name from a registered mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel finds that the domain name is confusingly similar to Complainant’s STATE FARM trademark.
Rights or Legitimate Interests
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 asserts that Respondent is not commonly known under the <statefarmplumber.com> domain name and has never performed any business activities under such a name. Complainant further asserts that it has not licensed or granted Respondent any permission to use the STATE FARM mark in any way. The Panel is mindful that the WHOIS information on record indicates that the registrant of the disputed domain name is “master plumbing,” which the Panel finds to be substantially dissimilar to the <statefarmplumber.com> domain name. The Panel accordingly determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues further that Respondent’s disputed domain name sends Internet users to a parked webpage that states that it is provided by GoDaddy.com. See Complainant’s Exhibit 3. The Panel has observed that the webpage contains links to insurance services that compete with those of Complainant under headings such as “Homeowner’s Insurance” and “Insurance Quotes Quick.”
The Panel concludes that Complainant has carried its burden of proof and the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name.
Respondent contends that it registered the disputed domain name with no intentions of publishing or advertising the name. Respondent claims that it intended the domain name to be used as a landing page within Respondent’s own site. Lastly, Respondent asserts that it did not know that the domain name would be an issue when it purchased it from GoDaddy.com.
The Panel is not convinced. Respondent admits, inter alia, to using the domain name as a landing stage within its own site. Respondent’s site displays various third-party click-through links, some of which resolve to Complainant’s competitors. Consequently, the Panel concludes that Respondent’s use of the disputed domain name, as depicted in Complainant’s Exhibit 3, is not 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). See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the 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).”).
Registration and Use in Bad Faith
Complainant contends that Respondent’s bad faith is reflected in its use of the disputed domain name to display various third-party click-through links, some of which resolve to Complainant’s competitors. While Complainant does not assert that Respondent achieves any financial gain from such usage of the disputed domain name the Panel infers such financial gain either through the click-through links, or from free web hosting services provided by GoDaddy.com. Further, the Panel is mindful that Respondent itself admits that it intended to use the disputed domain name to redirect Internet users to its commercial plumbing website. The Panel conjectures that Respondent would achieve some sort of financial gain through its use of the STATE FARM mark within the disputed domain name.
Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant affirms that Respondent registered the disputed domain name on June 12, 2012, and knew or should have known of Complainant’s rights in the STATE FARM mark at that time. Complainant asserts that such knowledge, whether actual or constructive, is evidence of Respondent’s bad faith registration of the disputed domain name.
Previous Panels have determined that arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
The Panel is of the opinion, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent contends that it registered the disputed domain name with no intentions of publishing or advertising the name. Respondent claims that it intended the domain name to be used as a landing page within Respondent’s own site. Lastly, Respondent asserts that it did not know that the domain name would be an issue when it purchased it from GoDaddy.com.
As previously stated, the Panel is not swayed by Respondent’s arguments and finds these claims insufficient to sustain its position.
The Panel finds that Respondent did register and use the disputed domain name in bad faith under 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 <statefarmplumber.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: October 30, 2012
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