State Farm Mutual Automobile Insurance Company v. Online Resource / Online Resource Management Ltd.
Claim Number: FA1505001618294
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Online Resource / Online Resource Management Ltd. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysfestatstatefarm.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2015; the Forum received payment on May 7, 2015.
On May 7, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mysfestatstatefarm.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 May 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2015 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@mysfestatstatefarm.com. Also on May 12, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). The mark is used on or in connection with underwriting and servicing auto, homeowners, life and fire insurance. The Complainant alleges that the <mysfestatstatefarm.com> domain name is confusingly similar to the STATE FARM mark because the domain name contains the entire mark and adds the generic phrase “my sfe stat” along with the generic top-level domain (“gTLD”) “.com.”
The Complainant further alleges that the Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a parked webpage containing various third party links, some of which compete with Complainant.
Complainant alleges that the Respondent has engaged in bad faith registration and use. Respondent’s use of the disputed domain name disrupts Complainant’s business. Respondent is also attempting to commercially benefit from a likelihood of confusion. Further, Respondent had actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Registrant registered the disputed domain name on February 16, 2015.
As the Respondent has failed to file a Response in the matter, the Panel will make its determination based on the reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered and famous trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and the Respondent has acted in bad faith use and registration of the disputed domain name.
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 has registered the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585, registered June 11, 1996). The mark is used on or in connection with underwriting and servicing auto, homeowners, life and fire insurance. The Panel finds that registration with the USPTO, plus the famous nature of the resulting mark, is sufficient to establish rights in a trademark.
The disputed domain name is confusingly similar to the Complainant’s famous trademark. The domain name consists of the Complainant’s trademark with the addition of the generic word “my” and the random letters “sfe stat”. The Complaint makes no allegations regarding to what these random letters refer. It could be, of course, referring to “statistics,” but as the Complainant has made no allegations and the letters “stat” do not spell an actual word, it would be inappropriate to characterize this as a “word” as the Complainant alleges. The most that can be said is that the disputed domain name consists of the Complainant’s trademark plus some random letters.
Adding generic phrases, let alone random letters, to a domain name that is otherwise identical to the mark at issue creates a confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
Thus, the Panel finds that the disputed domain name is confusingly similar to the STATE FARM mark for purposes of Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the <mysfestatstatefarm.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the STATE FARM mark in domain names. “Online Resource” is listed as the registrant of record for the disputed domain name. The record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name is being used to resolve to a parked webpage containing various third party links, some of which compete with Complainant. See Compl., at Attached Ex. 3. As a general rule, the respondent is always responsible for the content of a parked webpage. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Prior panels have found that use of a domain name to resolve to a webpage containing competing hyperlinks cannot consist of a bona fide offering or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”
Therefore, the Panel finds that Respondent does not have rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. To support this claim, Complainant again notes that the resolving webpage contains various third party links, some of which are competing links. See Compl., at Attached Ex. 3. Prior panels have found that use of a domain name to display competing hyperlinks can consist of bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Accordingly, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii).
Complainant also claims that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support this claim, Complainant argues that because the disputed domain name wholly incorporates the Complainant’s mark, and because some of the links on the resolving webpage contain the STATE FARM mark (see Compl. at Attached Ex. 3), Internet users are likely to believe the website resolving from the disputed domain name is sponsored by or affiliated with Complainant. Complainant also claims that Respondent must be commercially profiting in the process by receiving pay-per-click fees. Prior panels have found that a respondent who registers a domain name and creates a likelihood of confusion for commercial gain has engaged in bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Accordingly, the Panel finds that a likelihood of confusion exists and that Respondent is commercially profiting from that confusion; therefore, the Respondent is engaged in bad faith use and registration under Policy ¶ 4(b)(iv).
Lastly, Complainant asserts that its trademark registrations for the STATE FARM mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice alone is not usually sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights.
Thus, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(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 <mysfestatstatefarm.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: June 13, 2015
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