State Farm Mutual Automobile Insurance Company v. AK / Amit Kumar
Claim Number: FA1304001494856
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is AK / Amit Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm-quote.com>, registered with Name.com LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2013; the National Arbitration Forum received payment on April 15, 2013.
On April 15, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <statefarm-quote.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the names. Name.com LLC has verified that Respondent is bound by the Name.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 April 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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@statefarm-quote.com. Also on April 16, 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 May 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and the financial services industry.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (Reg. No. June 11, 1996).
c. In November of 2012, it was brought to Complainant’s attention that Complainant’s trademark STATE FARM had been registered as part of the domain name <statefarm-quote.com>.
d. Respondent has no legitimate interest in the domain name.
i. Respondent is not commonly known by or performed business under the domain name at issue.
ii. Respondent’s <statefarm-quote.com> initially sent individuals to a parked web page with click-through advertisements for various insurance companies/products, including some in direct competition with Complainant. At the date of this Complaint, there was no legitimate content associated with the name and no demonstrable indication that legitimate content would be forthcoming.
e. Respondent has acted in bad faith.
i. Respondent’s use of <statefarm-quote.com> domain name constitutes a disruption of Complainant’s business.
ii. Respondent’s <statefarm-quote.com> initially sent individuals to a parked web page with click-through advertisements for various insurance companies/products, including some in direct competition with Complainant.
iii. Respondent’s use of <statefarm-quote.com> domain name constitutes bad faith registration and use in that the disputed domain name resolves to an inactive website.
iv. Respondent knew of should have known of Complainant’s long-term use of the trademark “State Farm.”
Respondent registered its domain name on November 2, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is State Farm Mutual Automobile Insurance Company who list its address as Bloomington, IL, USA. Complainant is the owner of domestic and international registrations for the marks STATE FARM and STATE FARM INSURANCE, as well as related marks used in connection with the goods and services Complainant offers in the financial and insurance industries. Complainant also operates on the web at its official website <statefarm.com>.
Respondent is AK/Amit Kumar whose address is listed as Delhi, India. Respondent’s registrar’s address is listed as Denver, CO, USA. Respondent registered its domain name on November 2, 2012.
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, argues that it engages in business in both the insurance and the financial services industry. Complainant contends that it is the owner of trademark registrations with the USPTO for the STATE FARM mark (Reg. No. 1,979,585, registered June 11, 1996). See Complainant’s Exhibit 1. Although Respondent appears to reside in India Complainant is not required to register its mark in the country in which Respondent resides under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the STATE FARM mark with the USPTO sufficiently evidences its rights in the mark pursuant to 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 argues that in November of 2012, it was brought to Complainant’s attention that Complainant’s trademark STATE FARM had been registered as part of the domain name <statefarm-quote.com>. The Panel notes that Respondent uses Complainant’s STATE FARM mark in its entirety and adds the generic term “quote.” The Panel finds that the addition of a generic term to Complainant’s mark does not distinguish 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 also notes that Respondent adds a hyphen to the <statefarm-quote.com> domain name. The Panel finds that Respondent’s addition of a hyphen is irrelevant to a Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel further notes that Respondent removes the space in Complainant’s STATE FARM mark 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 does not negate confusing similarity pursuant to 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).”). The Panel finds that Respondent’s <statefarm-quote.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by or performs business under the domain name at issue. The Panel notes that the WHOIS information identifies “AK / Amit Kumar” as the registrant of the disputed domain name. Complainant asserts that Respondent is not associated with, affiliated with, or sponsored by Complainant. Complainant claims it did not authorize Respondent to register the domain name or to use the STATE FARM mark for Respondent’s business purposes. The Panel finds 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 asserts that Respondent’s <statefarm-quote.com> initially sent individuals to a parked web page with click-through advertisements for various insurance companies/products, including some in direct competition with Complainant. The Panel notes that Respondent’s disputed domain name resolves to a web page featuring competing hyperlinks titled “Allstate Official Site,” “Progressive Car Insurance,” “Cheapest Car Insurance,” and others. See Complainant’s Exhibit 3. The Panel finds that Respondent’s use of the disputed domain name to list competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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 argues that at the date of this Complaint, there was no legitimate content associated with the name and no demonstrable indication that legitimate content would be forthcoming. The Panel finds that Respondent’s failure to make an active use of the disputed domain name 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s use of the <statefarm-quote.com> domain name constitutes a disruption of Complainant’s business. The Panel again notes that Respondent’s disputed domain name resolves to a web page featuring competing hyperlinks titled “Allstate Official Site,” “Progressive Car Insurance,” “Cheapest Car Insurance,” and others. See Complainant’s Exhibit 3. The Panel concludes that Respondent’s use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. The Panel finds Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent’s use of <statefarm-quote.com> domain name constitutes bad faith registration and use in that the disputed domain name resolves to an inactive website. Complainant argues that at the date of this Complainant, there was no legitimate content associated with the name and no demonstrable indication that legitimate content would be forthcoming. Complainant claims that even if Respondent did put information on its website, its content along with the proposed domain name, would be in direct conflict with information Complainant already provides and would cause confusion to potential customers. The Panel finds that Respondent has failed to make an active use of the website thus demonstrating bad faith use and registration under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarm-quote.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 28, 2013
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