State Farm Mutual Automobile Insurance Company v. Techkraft c/o James Horn
Claim Number: FA0905001262256
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
NAME
The domain name at issue is <statefarmboyntonbeach.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 May 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 13, 2009.
On May 12, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmboyntonbeach.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 May 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 4, 2009 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@statefarmboyntonbeach.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2009, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmboyntonbeach.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmboyntonbeach.com> domain name.
3. Respondent registered and used the <statefarmboyntonbeach.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, is a nationally-known company that has
been doing business under the STATE FARM mark since 1930 in the insurance and
financial services industries.
Complainant holds numerous registrations of the STATE FARM with the
United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,979,585
issued June 11, 1996).
Respondent registered the <statefarmboyntonbeach.com> domain name on January 22, 2009. The disputed domain name resolves to a website that displays several hyperlinks to various third-party websites, some of which directly compete with Complainant.
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.
Complainant holds numerous
registrations of the STATE FARM with the USPTO, which the Panel finds as
sufficient evidence that Complainant has established rights in the STATE FARM
mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Respondent’s <statefarmboyntonbeach.com>
domain name contains Complainant’s entire mark, deletes the space within the
mark, adds the geographic term “Boynton Beach,” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the <statefarmboyntonbeach.com>
domain name is confusingly similar to Complainant’s STATE FARM mark under
Policy ¶ 4(a)(i) because none of these alterations to Complainant’s mark
sufficiently distinguish the disputed domain name from Complainant’s mark. See Oki
Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”); see also Net2phone
Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the
respondent’s domain name <net2phone-europe.com> is confusingly similar to
the complainant’s mark because “the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar").
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
In the beginning, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s <statefarmboyntonbeach.com> domain name resolves to a website that displays several hyperlinks to various third-party websites, some of which directly compete with Complainant. The Panel infers that Respondent receives click-through fees for these hyperlinks. Accordingly, the Panel finds that such use of these hyperlinks for a presumed fee diverts Internet users to websites that compete with Complainant, which, the Panel finds, 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 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)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
Moreover, Respondent is listed in the WHOIS information as “Techkraft c/o James Horn,” which does not
indicate that Respondent is commonly known by the <statefarmboyntonbeach.com> domain name. Respondent has not
offered any evidence to indicate otherwise.
The Panel finds that Respondent is not commonly known by the disputed
domain name under 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); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is using the <statefarmboyntonbeach.com>
domain name and the aforementioned
hyperlinks to divert Internet users to Complainant’s competitors. The Panel finds that such a diversion
disrupts Complainant’s business and constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v.
In addition, Respondent is using the confusingly similar <statefarmboyntonbeach.com> domain name to presumably collect
click-through fees by diverting Internet users to its website. The Panel finds that Respondent’s use of the
disputed domain to commercially gain by creating a likelihood of confusion as
to Complainant’s affiliation with the disputed domain name is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo!
Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of
<yahgo.com> to operate its search engine, a name that infringes upon
Complainant’s mark, Respondent is found to have created circumstances
indicating that Respondent, by using the domain name, has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s
website by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of the website or of a product
or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also
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 <statefarmboyntonbeach.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 24, 2009
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