State Farm Mutual Automobile Insurance Company v. david curfman
Claim Number: FA1402001544488
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is david curfman (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmquotenow.com> and <statefarmquotenow123.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2014; the National Arbitration Forum received payment on February 19, 2014.
On February 19, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmquotenow.com> and <statefarmquotenow123.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2014 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@statefarmquotenow.com, postmaster@statefarmquotenow123.com. Also on February 21, 2014, 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.
A Response was received on March 5, 2014, but was only received in hard copy without an electronic copy. The Response was therefore determined to be deficient under ICANN Rule 5. Further emails were received by the Forum which essentially underscored the terms on which Respondent would transfer the disputed domain names to Complainant.
On March 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in STATE FARM and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
For reasons stated above, the Forum found the Response to be deficient. Nonetheless, Panel has a residual discretion to accept and consider the Response. Having read both the Response and the additional emails sent to the Forum, Panel feels that Respondent’s submissions are so contained that it is appropriate to state them and take them into account.
Respondent has nothing to say in relation to Complainant’s trademark rights, the claim of confusing similarity (policy ¶ 4(a)(i)) or in relation to its own possible rights or legitimate interests in the disputed names (policy ¶ 4(a)(ii)) or in relation to the assertion that it acted in bad faith (policy ¶ 4(a)(iii)). In short, it does not address the Policy at all.
What Respondent does say is that it has been a customer of Complainant’s business and that it has wanted to transfer the disputed domain names to Complainant for two months provided Complainant paid Respondent $122 per domain name to cover its expenses.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a U.S. national insurance provider which since 1930 has offered its services by reference to the trademark STATE FARM;
2. Complainant owns, inter alia, United States Trademark Reg. No. 1,979,585 registered June 11, 1996 for the word mark STATE FARM;
3. The disputed domain names were registered on August 31, 2013;
4. The domain names resolve to a website that features links to services offered in competition with Complainant.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Panel is also satisfied that the disputed domain names are confusingly similar to Complainant’s trademark. The disputed domain names take the trademark and add non-distinctive elements – namely, the gTLD, “.com”, and the descriptive phrase “quote now” or the phrase “quote now” together with the numerals “123.” This generic added matter does nothing to distinguish the domain names from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also
Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) finding the <amextravel.com> domain name confusingly similar to Complainant’s AMEX trademark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that addition of "502" and "520" to the ICQ trademark did not reduce the potential for confusion; see finally, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found that the elimination of spaces between terms do not establish distinctiveness)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “David Curfman” and so there is no prima facie evidence that Respondent might be commonly known by either of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. On the contrary, Complainant provides evidence that the domain names resolve to parking pages provided by the Registrar which carry click-through links such as “Esurance Auto Insurance”, “Need Cheap Car Insurance?” and “Free Auto Insurance Quote”. Such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use (see TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services; see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of any submissions in relation to this aspect of the Policy, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraphs 4(b)(i) and (iv).
In terms of paragraph 4(b)(i), the evidence shows that the domain names are advertised for sale. Respondent has attempted to sell the domain names to Complainant. There is some ambiguity but on Panel’s reading of the documents as a whole Respondent demanded $122 per domain name. Panel finds that amount exceeds its out-of-pocket registration costs. Accordingly, Panel finds that Respondent’s offer to sell the disputed domain names is proof of bad faith use and registration pursuant to Policy ¶ 4(b)(i).
With respect to paragraph 4(b)(iv), Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Complainant submits evidence of screenshots of the web pages corresponding with the disputed domain names. Panel notes hyperlinks to various commercial websites offering services competitive with Complainant’s services. Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from this usage. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to an on-line location by creating a likelihood of confusion with the Complainant’s trademark (see Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmquotenow.com> and <statefarmquotenow123.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 31, 2014
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