State Farm Mutual Automobile Insurance Company v. Andy Koehneke
Claim Number: FA1301001479452
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Andy Koehneke (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmflood.com>, registered with GoDaddy.com, LLC.
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 January 9, 2013; the National Arbitration Forum received payment on January 9, 2013.
On January 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmflood.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 GoDaddy.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 January 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2013 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@statefarmflood.com. Also on January 10, 2013, 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 February 5, 2013, 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.
Complainant makes the following assertions:
i. Respondent is not commonly known under the domain name <statefarmflood.com>.
ii. Respondent’s disputed domain name sends a person to a parked web page, with click-through ads for various insurance companies and products.
i. Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business.
ii. Respondent is using the disputed domain name to send individuals to a parked webpage, with click-through ads for various insurance companies and products.
iii. Respondent knew or should have known of Complainant’s long-term use of the STATE FARM mark.
Respondent failed to submit a Response in this proceeding; however, Respondent sent an email to the National Arbitration Forum following entry of the default offering to “release” the domain name at issue.
1. Respondent’s <statefarmflood.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmflood.com> domain name.
3. Respondent registered or used the <statefarmflood.com> 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, State Farm Mutual Automobile Insurance Company, contends that it engages in business in both the insurance and financial services industry. Complainant argues that it provides evidence that it owns trademark registrations with the USPTO for the STATE FARM mark (Reg. No. 1,979,585, registered June 11, 1996). See Complainant’s Exhibit 1. Complainant also provides evidence that it owns trademark registrations with multiple trademark offices in various countries throughout the world. See Complainant’s Exhibit 1. The Panel notes that Respondent appears to reside within the United States. The Panel finds that Complainant’s registration of the STATE FARM mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <statefarmflood.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that Complainant makes no allegations about why Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The Panel notes that Respondent adds the generic term “flood” to the disputed domain name. The Panel determines that the addition of a generic term does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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)). The Panel notes that Respondent removes the space in Complainant’s mark between “STATE” and “FARM” and adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel finds that the removal of spaces and addition of a gTLD to Respondent’s domain name does not differentiate Respondent’s domain name from 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).”). Accordingly, the Panel determines that Respondent’s <statefarmflood.com> domain name is confusingly 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 asserts that Respondent is not commonly known under the domain name <statefarmflood.com>. Complainant contends that Respondent has never been known by or performed business under the disputed domain name. The Panel notes that the WHOIS information identifies “Andy Koehneke” as the registrant of the disputed domain name. See Complainant’s Exhibit 2. The Panel also notes that Respondent does not provide additional evidence that it is commonly known by the disputed domain name. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under 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 argues that Respondent’s disputed domain name sends a person to a parked web page, with click-through ads for various insurance companies and products. The Panel notes that Respondent’s domain name resolves to a webpage that provides links that directly compete with Complainant, such as “Homeowners Insurance,” “Flood Insurance,” “AARP & Hartford Auto Ins,” and others. See Complainant’s Exhibit 3. The Panel finds that Respondent’s use of the disputed domain name to provide competing links is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business. The Panel notes that Respondent’s domain name resolves to a website which features links to websites that compete with Complainant’s business, such as “Homeowners Insurance,” “Flood Insurance,” “AARP & Hartford Auto Ins,” and others. See Complainant’s Exhibit 3. The Panel finds that Respondent’s use of the disputed domain name to provide links that compete with Complainant disrupts Complainant’s business and shows bad faith use and registration under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is using the disputed domain name to send individuals to a parked webpage, with click-through ads for various insurance companies and products. Complainant argues that Respondent’s disputed domain name is clearly intended to attract individuals seeking information on Complainant’s business and to create customer confusion as to the source or sponsorship of the site. Complainant argues that Respondent is using the disputed domain name to generate business in other fashions. The Panel notes that Respondent’s domain name resolves to a website which features links that compete with Complainant’s business, such as “Homeowners Insurance,” “Flood Insurance,” “AARP & Hartford Auto Ins,” and others. See Complainant’s Exhibit 3. The Panel finds that Respondent’s use of the disputed domain name to attract and confuse Internet users evidences bad faith use and registration under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant asserts that Respondent knew or should have known of Complainant’s long-term use of the STATE FARM mark due to Complainant’s long-term use of the mark. The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also 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 <statefarmflood.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch
Dated: February 15, 2013
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