State Farm Mutual Automobile Insurance Company v. Andrew Dennis
Claim Number: FA1210001466968
Complainant is State Farm Mutual Automobile Insurance Company (“Complain-ant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Andrew Dennis (“Respondent”), Cali-fornia, USA.
REGISTRAR AND DISPUTED DOMAIN NAM
The domain name here at issue is <statefarminsurnace.com>, registered with Godaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 11, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 16, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarminsurnace.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.com, LLC has verified that Respondent is bound by the Go-daddy.com, LLC 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, includ-ing 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 enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@statefarminsurnace.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 has rights in the STATE FARM INSURANCE service mark, which it uses to market its insurance and financial services.
Complainant holds registrations for the STATE FARM INSURANCE mark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,125,010, registered September 11, 1979).
Respondent registered the disputed <statefarminsurnace.com> domain name on July 3, 2012.
The <statefarminsurnace.com> domain name is substantively identical and con-fusingly similar to the STATE FARM INSURANCE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not associated or affiliated with or sponsored by Complainant, and Complainant did not authorize Respondent to register the contested domain name or to use the STATE FARM INSURANCE mark.
Respondent does not do business under the name “State Farm” and does not have intellectual property rights in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
The disputed domain name resolves to a website which redirects Internet users to web pages unrelated to Complainant.
Respondent registered the domain name in order to create the impression of association with Complainant and its services, to trade off the goodwill assoc-iated with the STATE FARM INSURANCE mark, and to create confusion among Internet users looking for information about Complainant.
Respondent’s use of the STATE FARM INSURANCE mark in the domain name <statefarminsurnace.com> constitutes typo-squatting.
Respondent knew of Complainant’s rights in the STATE FARM INSURANCE mark when it registered the contested domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal 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 reason-able inferences of fact in the allegations of a UDRP 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 has rights in the STATE FARM INSURANCE service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demon-strates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning then to the central question arising under this head of the Policy, we conclude from our review of the record that the <statefarminsurnace.com> domain name is substantively identical and confusingly similar to the STATE FARM INSURANCE service mark. The only differences between the domain name and the mark are the transposition of two letters, the deletion of spaces between words, and the addition of the generic top-level domain (“gTLD”) “.com.”
These alterations of the mark, made in creating the domain name, are not suf-ficient to distinguish the domain name from the mark under the standards of the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Further, the elimination of spaces between the terms of a mark and the addition of a gTLD to the mark in forming a domain name are irrelevant to a Policy ¶ 4(a)(i) analysis because spaces are not permit-ted in a domain name and all domain names are required to have a gTLD. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. For-um Apr. 30, 2007) (finding that the elimination of spaces between terms of the mark of another and the addition of a gTLD to that mark do not establish distinct-iveness from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent is not associated or affiliated with or sponsored by Complainant, and that Complainant did not authorize Respondent to register the domain name or to use the STATE FARM INSURANCE service mark. Moreover, the WHOIS information for the <statefarminsurnace.com> domain name identifies the regis-trant only as “Andrew Dennis,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to demonstrated that it has rights to or legitimate interests in that domain name within the contemplation of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel there holding that a respondent was not commonly known by a disputed domain name, and so had no rights to or legit-imate interests in that domain name under Policy ¶ 4(c)(ii), based on the WHOIS information and other evidence in the record.
We next observe that Complainant contends, without objection from Respondent, that Respondent employs the disputed domain name to direct Internet users to websites unrelated to Complainant, and that Respondent registered the domain name in order to create an impression of association with Complainant and its services, to trade off the goodwill associated with the STATE FARM INSUR-ANCE mark, and to create confusion among Internet users looking for informa-tion about Complainant. On the facts before us, we may comfortably presume that Respondent profits from its use of the domain name in the manner describ-ed. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used the domain name to operate a website featuring links to websites offering goods and services unrelated to the business of a UDRP complainant).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the record that Respondent registered and is using the <statefarminsurnace.com> domain name in an attempt to take commercial ad-vantage of Internet users’ typographical mistakes made in entering Complain-ant’s STATE FARM INSURANCE service mark in their web browsers. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a domain name which was confusingly similar to the mark of another to display links to third-party websites unrelated to the business of a UDRP complainant demonstrated bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)). The deliberate misspelling of the mark of another in creating a domain name so as to exploit the typographical errors of Internet users is regarded as typo-squatting, which stands as evidence of bad faith registration and use of the resulting domain name. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Respondent’s registration and use of [a domain name] that capital-izes on the typographical error of an Internet user is considered typosquatting. Typosquatting itself is evidence of bad faith regis-tration and use pursuant to Policy ¶ 4(a)(iii).
In addition, we are convinced from the evidence that Respondent knew of Com-plainant and its rights in the STATE FARM INSURANCE service mark when it registered the contested domain name. This stands as independent evidence of bad faith registration of the domain name. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's mark at the time of its domain name registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <statefarminsurnace.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 29, 2012
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