national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Ryan Kuechenberg

Claim Number: FA1303001490355

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Ryan Kuechenberg (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmhurricaneshutters.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2013; the National Arbitration Forum received payment on March 18, 2013.

 

On March 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmhurricaneshutters.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 March 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@statefarmhurricaneshutters.com.  Also on March 19, 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 April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <statefarmhurricaneshutters.com> domain name, the domain name at issue, is confusingly similar to Complainant’s  STATE FARM mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930.  In 1999, Complainant opened a Federally Chartered Bank known as State Farm Bank and engages in business in both the insurance and the financial services industry. 

Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) in the STATE FARM mark (e.g., Reg. No. 1,979,585 registered June 11, 1996).  Respondent registered the <statefarmhurricaneshutters.com> domain name on October 30, 2012.  Respondent is not associated with Complainant, nor did Complainant authorize Respondent to use its STATE FARM mark.  Respondent is not commonly known by the disputed domain name.  The disputed domain name formerly resolved to a parked web page containing links to various insurance companies and products, in direct competition with Complainant and presently resolves to an error page. Neither use is a bona fide offering of goods or services.  By diverting customers to a click-through web page featuring links to Complainant’s competitors, Respondent is disrupting Complainant’s business.  Respondent knew or should have known of Complainant’s rights in the mark.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant owns rights in the STATE FARM service mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996) for its automobile insurance business.   A complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, Complainant has established rights in the STATE FARM mark for the purposes of Policy ¶ 4(a)(i).

 

The <statefarmhurricaneshutters.com> domain name is confusingly similar to Complainant’s STATE FARM mark.  The disputed domain name contains Complainant’s mark in its entirety. The addition of a generic top-level domain (“gTLD”) such as “.com,” as well as the deletion of the space between the words in Complainant’s mark, is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The disputed domain name adds the descriptive phrase “hurricane shutters,” which, given that Complainant is an insurance company, is potentially descriptive of an aspect of Complainant’s business.  Regardless, the addition of generic or descriptive words are insufficient to distinguish a domain name from a complainant’s mark, and the Panel finds that the <statefarmhurricaneshutters.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

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.”).

 

Respondent has not been commonly known by the disputed domain name and has therefore not demonstrated rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS record identifies “Ryan Kuechenberg” as the registrant. Complainant is not affiliated with Respondent and has not authorized Respondent to use the STATE FARM mark. Nominally unsupportive WHOIS information and a lack of authorization is strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).

 

The disputed domain name previously resolved to a parked website displaying links to Complainant’s competitors.  This use has been found by past panels not to represent 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, Respondent’s previous use of the disputed domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The disputed domain name presently resolves to an error page.  This use has been found by past panels to fail to amount to 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, Respondent has not established rights or legitimate interests in the <statefarmhurricaneshutters.com> domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent’s bad faith registration and use is demonstrated by its diversion of Internet users to competing hyperlinks, which is disruptive of Complainant’s business. The use of competitive links is evidence of bad faith disrupting under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii).

 

Finally, in light of the fame of Complaiant’s STATE FARM mark, Respondent had actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find 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).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <statefarmhurricaneshutters.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  April 18, 2013

 

 

 

 

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