State Farm Mutual Automobile Insurance Company v. James Sandberg / Jim Sandberg
Claim Number: FA1310001525119
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is James Sandberg / Jim Sandberg (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmlifequotes.com>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2013; the National Arbitration Forum received payment on October 17, 2013.
On October 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmlifequotes.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 October 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@statefarmlifequotes.com. Also on October 21, 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 November 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, State Farm Mutual Automobile Insurance Company, uses its STATE FARM mark to promote its products and services in both the insurance and financial industries.
Complainant owns rights in the STATE FARM mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996).
The <statefarmlifequotes.com> domain name incorporates Complainant’s STATE FARM mark and adds a phrase that is similar to services offered by Complainant under its STATE FARM mark.
Respondent is not commonly known as <statefarmlifequotes.com> and Complainant has not authorized Respondent to use its STATE FARM mark in a domain name. The disputed domain name resolves to a website that offers insurance products that directly compete with those offered by Complainant under its STATE FARM mark.
Respondent has demonstrated bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii) because the disputed domain name resolves to a website that offers insurance products that compete with Complainant’s products. Respondent is using the disputed domain name to attempt to pass itself off as Complainant, which demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Respondent registered the disputed domain name on March 1, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO trademark registration for its STATE FARM mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the STATE FARM mark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by the at-issue domain name offers insurance products that directly compete with those offered by Complainant under its STATE FARM trademark.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the STATE FARM mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The at-issue domain is made up of Complainant’s entire mark, without the space, adds the generic terms “life” and “quotes” and appends the top-level domain name “.com” thereto. The resulting differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). In fact, the addition of “life” plus “quotes” to Complainant’s mark only serves to increase confusion between the domain name and the mark since the terms suggest Complainant’s insurance business. Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s STATE FARM trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), (holding that the addition of descriptive or generic terms did not remove a disputed domain name from the realm of confusing similarity); See also. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), (finding that spaces and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
The WHOIS record for the at-issue domain name lists “James Sandberg / Jim Sandberg” as the domain name registrant. Furthermore, there is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <statefarmlifequotes.com> domain name pursuant to 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).
The <statefarmlifequotes.com> website displays the heading “StateFarmLifeQuotes.com: Buying Life Insurance, Just Got A Whole Lot Easier!” and a heading entitled “Get An Instant Quote, Today!” which calls for Internet users to provide certain personal information via an online form and submit the information via a button entitled “SHOW MY QUOTE.” Given the foregoing it is apparent that the at-issue domain name is being used to offer life insurance products that directly compete with those provided by Complainant under its STATE FARM trademark. Using the domain name in this manner 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), (holding that Policy ¶¶ 4(c)(i) and 4(c)(iii) does not provide rights or legitimate interests to respondents using a disputed domain name to promote competitive links).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above, Respondent’s domain name addresses a website that Respondent uses to promote insurance products that directly compete with products offered by Complainant. Respondent’s use of the confusingly similar domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Furthermore, using the domain name to directly compete with Complainant is disruptive to Complainant’s business and thus additionally demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (finding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmlifequotes.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 18, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page