State Farm Mutual Automobile Insurance Company v. ETS / GS Scott
Claim Number: FA1301001479867
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is ETS / GS Scott (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmtwocheck.com>, registered with ENOM, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2013; the National Arbitration Forum received payment on January 11, 2013.
On January 14, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <statefarmtwocheck.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 January 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 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@statefarmtwocheck.com. Also on January 15, 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 8, 2013, 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 has rights in the STATE FARM mark.
a. Complainant uses the STATE FARM mark in connection with insurance and financial services.
b. 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 Jun. 11, 1996).
b) The <statefarmtwocheck.com> domain name is confusingly similar to the STATE FARM mark.
a. The addition of generic words to a mark does not negate a finding of confusing similarity.
c) Respondent has no rights or legitimate interests in the <statefarmtwocheck.com> domain name.
a. Respondent is not commonly known by the disputed domain name. Respondent is not associated with, affiliated with or sponsored by Complainant. State Farm did not authorize Respondent to register the domain name or to use the STATE FARM mark for Respondent’s business purposes.
b. The disputed domain name previously resolved to a webpage displaying links to “Top News Stories.”
c. The <statefarmtwocheck.com> domain name currently resolves to an error page.
d) Respondent registered and is using the <statefarmtwocheck.com> domain name in bad faith.
a. Respondent registered and previously used the name to create the impression of association with Complainant and to trade off the good will associated with the STATE FARM mark by creating initial interest confusion for individuals looking for information about Complainant.
b. Currently there is no demonstrable indication that Respondent will be legitimately using the disputed domain name.
c. Respondent knew or should have known of Complainant’s long term use of the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its STATE FARM mark.
2. Respondent’s <statefarmtwocheck.com> 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. Complainant asserts that it uses the STATE FARM mark in connection with insurance and financial services. Complainant notes that it is the owner of the USPTO registration for the STATE FARM mark (Reg. No. 1,979,585 registered Jun. 11, 1996). Panels have held that the registration of a mark with a federal trademark office is sufficient evidence of having rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Complainant next asserts that the <statefarmtwocheck.com> domain name is confusingly similar to the STATE FARM mark. Complainant notes that the addition of generic words to a mark does not negate a finding of confusing similarity. The Panel finds that Respondent’s addition of the phrase “twocheck” fails to differentiate the disputed domain name from the mark in such a way that eliminates confusing similarity. 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 also finds that Respondent’s deletion of the space between words in the mark and the addition of the generic top-level domain (“gTLD”) is irrelevant for the purposes of Policy ¶ 4(a)(i). See 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)). Therefore, the Panel finds that the <statefarmtwocheck.com> 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 argues that Respondent has no rights or legitimate interests in the <statefarmtwocheck.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. According to Complainant, Respondent is not associated with, affiliated with or sponsored by Complainant, and Complainant did not authorize Respondent to register the domain name or to use the STATE FARM mark for Respondent’s business purposes. The Panel also notes that the WHOIS record for the <statefarmtwocheck.com> domain name lists “ETS / GS Scott” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <statefarmtwocheck.com> domain name pursuant to 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant next alleges that the disputed domain name previously resolved to a webpage displaying links to “Top News Stories.” Panels have previously found that the resolution of a disputed domain name to a website displaying links unrelated to the complainant is evidence of a lack of rights and legitimate interests. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent’s previous use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent asserts that the current non-use of the <statefarmtwocheck.com> domain name evidences Respondent’s lack of rights and legitimate interests. Complainant notes that the <statefarmtwocheck.com> domain name currently resolves to an error page. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the panel held that the passive holding of the domain name demonstrated a lack of rights and legitimate interests. Therefore, the Panel finds that Respondent’s present non-use of the <statefarmtwocheck.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent registered and is using the <statefarmtwocheck.com> domain name in bad faith. Complainant asserts that Respondent registered and previously used the name to create the impression of association with Complainant and to trade off the good will associated with the STATE FARM mark by creating initial interest confusion for individuals looking for information about Complainant by displaying unrelated links via the <statefarmtwocheck.com> domain name. Therefore, the Panel finds that Respondent registered and use the <statefarmtwocheck.com> domain name in bad faith 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 contends that there is no demonstrable indication that Respondent will be legitimately using the disputed domain name. The <statefarmtwocheck.com> domain name presently resolves to nothing more than an error page. Panels have found that the nonuse of a domain name, with no indication of an intent to use the domain, is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent registered and is holding the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant asserts that Respondent knew or should have known of Complainant’s long term use of the STATE FARM mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); 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 <statefarmtwocheck.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 22, 2013
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