State Farm Mutual Automobile Insurance Company v. Michael Thomas
Claim Number: FA1403001551864
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Michael Thomas (“Respondent”), Trinidad and Tobago.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kefromstatefarm.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2014; the National Arbitration Forum received payment on March 31, 2014.
On March 31, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <kefromstatefarm.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 April 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@kefromstatefarm.com. Also on April 1, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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
a) Complainant is a nationally known company in the insurance and financial services industry. Complainant has used the STATE FARM mark since 1930. Complainant has operated its own website, located at <statefarm.com>, since 1995.
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 Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996).
c) Respondent’s <kefromstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
d) Respondent does not have rights and legitimate interests in the <kefromstatefarm.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. In December 2013, the <kefromstatefarm.com> domain name resolved to a parked page with click-through advertisements for Complainant’s competitors.
c. The <kefromstatefarm.com> domain name currently resolves to a parked page without any content besides that provided by GoDaddy.com.
e) Respondent registered and is using the <kefromstatefarm.com> domain name in bad faith.
a. Respondent was disrupting Complainant’s business by using the <kefromstatefarm.com> domain name to promote links of Complainant’s competitors.
b. Respondent is attempting to attract individuals to the <kefromstatefarm.com> domain name by creating confusion as the source or sponsorship of the website. The <kefromstatefarm.com> domain name previously featuring links to Complainant’s competitors, and it currently features unrelated links provided by GoDaddy.com.
c. Respondent had knowledge of Complainant’s STATE FARM mark prior to registering the <kefromstatefarm.com> domain name because Complainant’s mark has long-standing use.
f) Respondent registered the <kefromstatefarm.com> domain name on December 3, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 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, previous 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 within the meaning of Policy ¶ 4(a)(i) because Complainant owns valid trademark registrations for the STATE FARM mark 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 alleges that Respondent’s <kefromstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the letters “k” and “e,” the generic term “from,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that that addition of two characters to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”). The Panel finds that the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. 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.”).
Complainant has proven this element.
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 that Respondent does not have rights and legitimate interests in the <kefromstatefarm.com> domain name. Complainant asserts that 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 “Michael Thomas” as the domain name registrant. Previous 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 <kefromstatefarm.com> domain name under Policy ¶ 4(c)(ii).
Complainant states that in December 2013 the <kefromstatefarm.com> domain name resolved to a parked page with click-through advertisements for Complainant’s competitors. Previous panels have found that using a confusingly similar domain name to redirect Internet users to a website promoting links of a complainant’s competitors does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See 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)). Therefore, the Panel finds that Respondent is not making 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) because the <kefromstatefarm.com> domain name previously resolved to a website featuring links to Complainant’s competitors.
Complainant observes that the <kefromstatefarm.com> domain name currently resolves to a parked page without any content besides that provided by GoDaddy.com. Previous panels have found that using a confusingly similar domain name that features links unrelated to a complainant does not constitute 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 or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <kefromstatefarm.com> domain name because the disputed domain name currently resolves to a page featuring links unrelated to Complainant.
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <kefromstatefarm.com> domain name in bad faith. Complainant claims Respondent was disrupting Complainant’s business by using the <kefromstatefarm.com> domain name to promote links of Complainant’s competitors. In previous cases, panels have held that using a confusingly similar domain name to promote links to a complainant’s competitors constitutes a bad faith disruption under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and is using the <kefromstatefarm.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the disputed domain name was being used to display links of Complainant’s competitors.
Complainant claims Respondent is attempting to attract individuals to the <kefromstatefarm.com> domain name by creating confusion as the source or sponsorship of the website. Complainant observes that the <kefromstatefarm.com> domain name previously featuring links to Complainant’s competitors, and it currently features content provided by GoDaddy.com. Previous panels have found that using a confusingly similar domain name to host competing or unrelated links demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Therefore, the Panel finds that Respondent registered and is using the <kefromstatefarm.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because at different times the disputed domain name displayed competing and unrelated links.
Complainant alleges that Respondent had knowledge of Complainant’s STATE FARM mark prior to registering the <kefromstatefarm.com> domain name because Complainant’s mark has long-standing use. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, and the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <kefromstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 30, 2014
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