State Farm Mutual Automobile Insurance Company v. Hildegard Gruener
Claim Number: FA1403001551952
Complainant is State Farm Mutual Automobile Insurance Company (“Complain-ant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Hildegard Gruener (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autoinsurancestatefarm.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 31, 2014; the National Arbitration Forum received payment on March 31, 2014.
On April 1, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbi-tration Forum that the <autoinsurancestatefarm.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 GO-DADDY.COM, LLC registration agreement and has thereby agreed to resolve do-main disputes brought by third parties in accordance with ICANN’s Uniform Do-main Name Dispute Resolution Policy (the “Policy”).
On April 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2014 by which Re-spondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and bil-ling contacts, and to postmaster@autoinsurancestatefarm.com. Also on April 2, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail ad-dresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 25, 2014, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 has been doing business in both the insurance and the financial services industries under the name “State Farm” since 1930.
Complainant has registered the STATE FARM trademark with the United States Patent and Trademark Office (“USPTO”) (as Registry No. 1,979,585, registered June 11, 1996).
Respondent registered the <autoinsurancestatefarm.com> domain name on or about January 27, 2014.
Respondent’s <autoinsurancestatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not associated with or sponsored by Complainant.
Complainant has not authorized Respondent to register the contested domain name or use it in any way.
Respondent is not making either a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
Respondent registered the disputed domain name to create the impression of association with Complainant and to trade of the good will associated with Complainant’s STATE FARM mark.
The domain name resolves to a parked website with pay-per-click advertise-ments for the websites of insurance companies and their products, some of which directly compete with the business of Complainant.
Respondent has no rights to or legitimate interests in that domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its STATE FARM mark when Respondent registered the <autoinsurancestatefarm.com> domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the STATE FARM service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); to the same effect, see also State Farm Mutual Auto. Ins. Co. v. Hildegard Gruener, FA 1521506 (Nat. Arb. Forum Oct. 22, 2013).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Austria). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in a mark in some jurisdiction). See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that under Policy ¶ 4(a)(i) it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <autoinsurancestatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The domain name incorporates Complainant’s mark in its entirety, merely deleting the space between the terms of the mark and adding the generic term “auto insurance,” which describes an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.”
These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (finding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
See also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combined a complainant’s mark with a generic term that had an obvious relationship to that complainant’s business).
Further see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of the mark of another in forming a domain name is of no consequence to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not commonly known by the <autoinsurancestatefarm.com> domain name, that Respondent is not associated with or sponsored by Com-plainant, and that Complainant has not authorized Respondent to register the domain name or use it in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Hildegard Gruener,” which does not resemble the domain name. On this record we must conclude that Re-spondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provid-ed in Policy ¶ 4(c)(ii), where the relevant WHOIS information identified the regis-trant by a name other than the domain names there in dispute, and where there was no other evidence in the record to suggest that that respondent was com-monly known by any of those domain names).
We next observe that Complainant asserts, without objection from Respondent, that Respondent registered the <autoinsurancestatefarm.com> domain name to create the impression of association with Complainant and to trade on the good will associated with Complainant’s mark, and that the domain name resolves to a parked website with pay-per-click advertisements for the websites of insurance companies and products, some of which directly compete with the business of Complainant. This employment of the domain name is neither a bona fide offer-ing of goods or services under Policy ¶ 4(c)(i) nor 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) (finding that the operation of a pay-per-click website at a domain name that was confusingly similar to the mark of another 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)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <autoinsurancestatefarm.com> domain name, as alleged in the Com-plaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
Respondent currently utilizes the disputed domain name, …, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent employs the disputed <autoinsurancestatefarm.com> domain name, which is confusingly similar to Complainant’s STATE FARM service mark, to profit from confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this further dem-onstrates bad faith in the registration and use of the domain name. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv), where:
Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Com-plainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for com-peting real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Finally under this head of the Policy, the evidence shows that Respondent knew of Complainant and its rights in the STATE FARM mark when Respondent regis-tered the <autoinsurancestatefarm.com> domain name. This is independent proof of Respondent’s bad faith in the registration of the domain name. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when it registered a disputed domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <autoinsurancestatefarm.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 6, 2014
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