State Farm Mutual Automobile Insurance Company v. Tacheny Home Services LLC. c/o Jason Tacheny
Claim Number: FA0807001214619
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <statefarmroofin.com> and <statefarmroofedme.com>, registered with Godaddy.com, 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 July 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 10, 2008.
On July 10, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmroofin.com> and <statefarmroofedme.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 5, 2008
by which Respondent could file a
response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent's registration as
technical, administrative and billing contacts, and to postmaster@statefarmroofin.com and postmaster@statefarmroofedme.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2008, 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmroofin.com> and <statefarmroofedme.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmroofin.com> and <statefarmroofedme.com> domain names.
3. Respondent registered and used the <statefarmroofin.com> and <statefarmroofedme.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant does business in both the insurance and financial services industry. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585). For over 70 years, Complainant has marketed its products and services under the STATE FARM mark.
Respondent registered the <statefarmroofin.com> and <statefarmroofedme.com> domain names on February 27, 2008. The <statefarmroofin.com> domain name resolves to a website that says it’s parked free courtesy of the registrar, and contains links for various insurance products and services. The <statefarmroofedme.com> domain name redirects to a website that resolves from the <roofin.net> domain name, which is the website for “Pete Tacheny Roofing and Siding, Inc.”
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."
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.”).
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.
The Panel finds that Complainant has established rights in
the STATE FARM mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Miller Brewing
Complainant contends that
Respondent’s disputed domain names are confusingly similar to its STATE FARM
mark. The disputed domain names
differ from Complainant’s mark in three ways: (1) the space between the words
has been removed; (2) terms unrelated to Complainant’s business, such as “roofin”
and “roofedme,” have been added to the end of the mark; and (3) the generic
top-level domain (“gTLD”) “.com” has been added. The addition of a term unrelated to a
complainant’s business does not sufficiently distinguish a domain name from an
incorporated mark for the purposes of Policy ¶ 4(a)(i), nor does the removal of
the space between words. The addition of a gTLD also does not reduce the
likelihood of confusion between the domain name and the mark, because every
domain name must contain a top-level domain.
Therefore, the Panel finds that these changes do not minimize or
eliminate the resulting likelihood of confusion, and so Respondent’s disputed
domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Surface Prot. Indus., Inc.
v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name
<mannbrothers.com> confusingly similar to the complainant’s MANN BROTHERS
mark “so as to likely confuse Internet users who may believe they are doing
business with Complainant or with an entity whose services are endorsed by,
sponsored by, or affiliated with Complainant; hence, satisfying the confusing
similarity requirement”); see also 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”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain
is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the disputed
domain names nor has it ever been the owner or licensee of the STATE FARM mark.
The WHOIS record for the disputed domain names lists Respondent as “Tacheny Home Services LLC. c/o Jason Tacheny.” Because of this evidence, along with the fact
that Respondent has failed to show any evidence contrary to Complainant’s
contentions, the Panel finds that Respondent is not commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See
Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum
Feb. 6, 2003) (“Considering the nonsensical nature of the
[<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent.”); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003)
(“Given the WHOIS contact information for the disputed domain [name], one can
infer that Respondent, Onlyne Corporate Services11, is not commonly known by
the name ‘welsfargo’ in any derivation.”).
The <statefarmroofin.com> domain name resolves to a website that features links to websites offering the products and services of Complainant’s competitors. The Panel finds that the use of the <statefarmroofin.com> domain name to promote Complainant’s competitors is neither 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The <statefarmroofedme.com> domain name redirects to the <roofedin.com> domain name, which resolves to the website for “Pete Tacheny Roofing and Siding, Inc.” The Panel finds that Respondent’s use of the <statefarmroofedme.com> domain name for commercial gain is also neither 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). Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to divert Internet customers from Complainant’s website to the websites
that resolve from the disputed domain names, through the confusion caused by
the similarity between the STATE FARM mark and the disputed domain names. Complainant also contends that Respondent
intended to disrupt Complainant’s business by diverting confused customers to other
businesses, including Complainant’s competitors. The Panel finds that Respondent’s use of the
disputed domain names disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining
commercially through this diversion, both through click-through fees and
through the business that may come to “Pete Tacheny Roofing and Siding, Inc.” The Panel finds that Respondent is intentionally
using the disputed domain names for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this also constitutes evidence of registration and
use in bad faith. See TM Acquisition Corp. v.
Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where
the respondent used the domain name, for commercial gain, to intentionally
attract users to a direct competitor of the complainant); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmroofin.com> and <statefarmroofedme.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 21, 2008
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