State Farm Mutual Automobile Insurance Company v. Sean Dada
Claim Number: FA1309001521298
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Sean Dada (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suestatefarm.info>, registered with GoDaddy.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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2013; the National Arbitration Forum received payment on September 25, 2013.
On September 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <suestatefarm.info> 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 September 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@suestatefarm.info. Also on September 26, 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 October 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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 makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on January 6, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 decides 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 states that it uses its STATE FARM mark to engage in business in both the insurance and financial services industries on a national level. Complainant contends that it owns interests in the STATE FARM mark through registrations of the mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). See Complainant’s Exhibit 1. The Panel notes that it has previously been determined that a complainant’s registration of a mark with the USPTO sufficiently establishes the complainant’s rights in the mark under the Policy. 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)). Accordingly, the Panel holds that Complainant has sufficiently established its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).
Complainant next suggests that Respondent’s <suestatefarm.info> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the domain name fully incorporates the mark and merely adds the generic top-level domain (“gTLD”) “.info” as well as the generic word “sue.” The Panel notes that a domain name’s addition of a gTLD such as “.info” is typically considered irrelevant for the purposes of a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Previous panels have also held that a domain name’s addition of a generic term to a complainant’s mark does not sufficiently distinguish the domain name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). This outcome is the same even when the added generic word is a negative word. See Yahoo! Inc. v. Fato, FA 286410 (Nat. Arb. Forum July 26, 2004) (finding the <fuckyahoo.com> domain name confusingly similar to the complainant’s YAHOO! mark); see also Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding the domain name <vivendiuniversalsucks.com> was confusingly similar to the complainant's VIVENDI UNIVERSAL mark, because non-English speakers would associate the domain name with the owner of the trademark). In the instant proceeding, the Panel holds that the added term “sue” is a generic negative term. Therefore, the Panel holds that the <suestatefarm.info> domain name is confusingly similar to Complainant’s STATE FARM mark under the Policy.
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 is not commonly known as <suestatefarm.info> and Complainant did not authorize Respondent to use its STATE FARM mark in a domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held 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 them and the complainant had not authorized the respondent to register a domain name containing its registered mark. The Panel notes that here, as in Braun Corp., supra, Complainant alleges that it has not authorized Respondent to appropriate its STATE FARM mark in a domain name. The Panel also observes that the WHOIS information identifies the registrant of the disputed domain name as “Sean Dada,” which suggests Respondent is known by that name and not by the name of “Sue State Farm.” Therefore, as the Panel determines that no other evidence in the record suggests that Respondent is commonly known as <suestatefarm.info>, it holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that the <suestatefarm.info> domain name previously resolved a parked website that hosted click-through links to third-party websites, some of which directly competed with Complainant in the insurance industry, which was not 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 Complainant’s Exhibit 3.1. The Panel determines that as recently as April 9, 2013, the disputed domain name resolved to a pay-per-click website promoting hyperlinks to various third parties, including competing links entitled “What is your claim worth?;” “SBLI Life Insurance;” and “Conning: Premier insurance industry research and analysis,” as well as unrelated links entitled “SelectBlinds.com Sale;” “Can I Sue?;” and “WindowFilmandMore.com.” See id. Complainant suggests that although the disputed domain name now resolves to a noncommercial website entitled “Lawsuit King,” which contains various blog-type entries pertaining to various issues and companies, Respondent did not engage in this noncommercial use of the disputed domain name until after Complainant sent Respondent a cease and desist letter on January 23, 2013. See Complainant’s Exhibits 4 & 3.3-3.1. The Panel observes that according to screenshots provided by Complainant, Respondent modified the pay-per-click content of the at-issue website sometime during the period in between April 9, 2013 and May 9, 2013: well after Complainant sent the cease and desist letter on January 23, 2013. See Complainant’s Exhibits 4 & 3.1-3.2. The Panel notes that it has previously been determined that the use of a disputed domain name to operate a pay-per-click website is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). In the instant proceeding, the Panel holds that Respondent previously used the <suestatefarm.info> domain name to operate a pay-per-click website, which was not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). Furthermore, the Panel reasons that although Respondent currently appears to be using the disputed domain name for a noncommercial use, this seemingly legitimate interest in the domain name did not exist at the time the cease and desist letter was sent on January 23, 2013 nor at the time the domain name was registered on January 6, 2013, so the Panel infers that the change was not due to a development of rights or legitimate interests but merely a calculated move to appear to have them. Therefore, the Panel holds that Complainant has sufficiently established that the Respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant argues that the disputed domain name fully incorporates Complainant’s mark and thus creates a likelihood that Respondent’s website will be confused for a website affiliated with Complainant. Complainant further argues that as recently as April 9, 2013, Respondent was profiting from its use of the disputed domain name in the form of click-through fees, and has thus demonstrated bad faith registration and use of the <suestatefarm.info> domain name pursuant to Policy ¶ 4(b)(iv). See Complainant’s Exhibit 3.1. The Panel determines that as recently as April 9, 2013, the disputed domain name resolved to a website promoting hyperlinks to various third parties, including links entitled “What is your claim worth?;” “SBLI Life Insurance;” and “Conning: Premier insurance industry research and analysis,” as well as seemingly unrelated links entitled “SelectBlinds.com Sale;” “Can I Sue?;” and “WindowFilmandMore.com.” See id. Previous panels have held that a respondent demonstrates bad faith pursuant to Policy ¶ 4(b)(iv) where the domain name is confusingly similar to the complainant’s mark and the respondent has presumably profited from the disputed domain name in the form of click-through fees. See, e.g., Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). In the instant proceedings, as in Zee TV, supra, the Panel holds that the <suestatefarm.info> domain name is confusingly similar to Complainant’s STATE FARM mark and is thus likely to cause confusion in Internet users. Further, as in Associated Newspapers, supra, the Panel presumes that by promoting links to Complainant’s competitors in the insurance industry, Respondent obtained a commercial profit from its use of the disputed domain name. Accordingly, the Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Complainant also implies that Respondent has demonstrated bad faith registration and use of the <suestatefarm.info> domain name under Policy ¶ 4(a)(iii), because Respondent changed the content of the resolving website after it had been sent a cease and desist letter. See Complainant’s Exhibits 3.1-3 & 4. Complainant further suggests that this change in content tends to show that the noncommercial content that currently resolves from the disputed domain name is merely a front to avoid an adverse UDRP decision. The Panel notes that the factors listed in Policy ¶ 4(b) are not intended to be an exhaustive list. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original). Accordingly, as the Panel agrees with Complainant that the Respondent’s modification of the at-issue website after receiving a cease and desist letter tends to show that the current content of the website is merely a front to avoid an adverse UDRP decision, it also holds that this tends to show Respondent’s bad faith registration and use of the <suestatefarm.info> domain name under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <suestatefarm.info> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 25, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page