State Farm Mutual Automobile Insurance Company v. ICS INC.
Claim Number: FA1312001532398
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmsfcu.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 December 2, 2013; the National Arbitration Forum received payment on December 2, 2013.
On December 3, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <statefarmsfcu.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@statefarmsfcu.com. Also on December 4, 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 December 30, 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
a) Complainant is a nationally known insurance and financial services company, and Complainant has been in business since 1930. Complainant has its own website located at <statefarm.com>.
b) Complainant has rights in the STATE FARM mark, used in connection with insurance and financial services. Complainant owns registrations for the STATE FARM mark with the United States Patent and Trademark (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996).
c) Respondent’s <statefarmsfcu.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
d) Respondent does not own any rights or legitimate interests in the <statefarmsfcu.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STATE FARM mark in any way.
b. The <statefarmsfcu.com> domain name resolves to a parked page containing click-through links for various products and services. See Complainant’s Exhibit 3.
e) Respondent registered and is using the <statefarmsfcu.com> domain name in bad faith.
a. The resolving website is a parked page featuring click-through links for a variety of products and services. See Complainant’s Exhibit 3.
b. Respondent knew or should have known of Complainant’s use of the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <statefarmsfcu.com> domain name on June 30, 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 name 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 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 contends it has rights in the STATE FARM mark, used in connection with insurance and financial services. Complainant states it owns registrations for the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i) because Complainant has a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <statefarmsfcu.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the disputed domain name includes Complainant’s mark in its entirety while adding the string of characters “sfcu” and the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a generic term or string of random characters to a domain name is seldom enough to avoid confusion. See, e.g., Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also agrees that the removal of the STATE FARM mark’s spacing does not evidence meaningful variation. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <statefarmsfcu.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
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 contends Respondent does not own any rights or legitimate interests in the <statefarmsfcu.com> domain name. Complainant claims Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STATE FARM mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “ICS INC.” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the STATE FARM mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <statefarmsfcu.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <statefarmsfcu.com> domain name resolves to a parked page containing click-through links for various products and services. See Complainant’s Exhibit 3. The Panel notes that the website includes links such as “Organic Coffee,” “Small Business Grants,” and “Food Delivery.” Id. Past panels have found that using a confusingly similar domain name to display unrelated links does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent is not making 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) because the <statefarmsfcu.com> domain name resolves to a parked page containing click-through links for various products and services unrelated to Complainant.
Complainant contends Respondent registered and is using the <statefarmsfcu.com> domain name in bad faith. Complainant asserts that the resolving website is a parked page featuring click-through links for a variety of products and services. See Complainant’s Exhibit 3. The Panel notes that the website includes links such as “Organic Coffee,” “Small Business Grants,” and “Food Delivery.” Id. Previous panels have found that using confusingly similar domain name to promote third-party links unrelated to Complainant in order to profit from click-through fees demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent registered and is using the <statefarmsfcu.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name resolves to a website featuring unrelated third-party links from which Respondent receives click-through revenue.
Complainant contends that based on the widespread public knowledge of the STATE FARM mark, Respondent had to have known (or at the least, had reason to know) of Complainant and the STATE FARM mark. The Panel agrees that Complainant is not held to a “should have known” or constructive notice requirement under the UDRP. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel finds that the STATE FARM mark is renowned enough that Respondent likely knew of the STATE FARM mark when registering a domain name that fully incorporated the STATE FARM mark. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). As such, the Panel agrees that such actual knowledge is evidence of Policy ¶ 4(a)(iii) bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmsfcu.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: December 31, 2013
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