State Farm Mutual Automobile Insurance Company v. domain admin
Claim Number: FA1612001708035
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is domain admin (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teendrivingstatefarm.com> (‘the Domain Name’) registered with Key-Systems GmbH.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On December 20, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <teendrivingstatefarm.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@teendrivingstatefarm.com. Also on December 21, 2016, 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 January 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant has been doing business since 1930 under the name STATE FARM in the insurance and financial services industries. Complainant owns trade mark registrations including its STATE FARM mark including STATE FARM INSURANCE registered in 1979 and STATE FARM in 1996 in the USA for its services. It operates a web site for its business at statefarm.com. The STATE FARM mark is distinctive and has secondary meaning.
The Domain Name registered in 2015 is confusingly similar to Complainant’s STATE FARM trade mark and to products, services and information that Complainant offers generally to the public including on its web site.
Respondent has no rights or legitimate interest in the Domain Name. Complainant has not authorised Respondent to use its mark and Respondent has no affiliation with Complainant. Respondent is not commonly known by the Domain Name and does not have any intellectual property rights in it.
The Domain Name is clearly intended to attract individuals seeking information on Complainant and to create customer confusion as to the source or sponsorship of the site. The use of the Domain Name to a web page with click through links to various third party companies some of which are in direct competition with Complainant to generate business from Complainant’s trade mark is bad faith. It is not bona fide use.
The Domain Name resolves to click through links to third party companies including competitors of Complainant. The Domain Name is disruptive to Complainant’s business under paragraph 4(b)(iii) of the Policy.
Respondent has not responded to cease and desist letters from Complainant which is also indicative of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has been doing business since 1930 under the name STATE FARM in the insurance and financial services industries. Complainant owns trade mark registrations, including its STATE FARM mark and including STATE FARM INSURANCE registered in 1979 and STATE FARM in 1996 in the USA for its insurance services.
The Domain Name registered in 2015 has been pointed to a site containing links to third party businesses including services that compete with Complainant.
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(f), 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 (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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's STATE FARM mark (which is registered in USA for insurance services and has been used since at least 1930), the generic term ‘teen driving’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the complainant). The Panel agrees that the addition of the generic term ‘teendriving’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact it may add to confusion as it could be seen as a description of some products offered by Complainant.
The gTLD .com does not serve to distinguish the Domain Name from the STATE FARM mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that the site is set up for commercial benefit to compete with Complainant using the latter's intellectual property rights. Respondent is using the site to point to services in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to a bona fide offering of goods and services. See Danbyg Ejendomme A/S v. Ib Hansen / guerciotti, FA 1504001613867 (Forum June 2, 2015)(finding that the respondent had failed to provide a bona fide offering of goods and services, or a legitimate non commercial or fair use of the disputed domain name where the disputed domain name resolved to a web site that offered both competing and non competing hyperlinks unrelated to the complainant’s business).
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant also alleges that Respondent's use of the site attached to the Domain Name is commercial and it is using it to make a profit by competing with Complainant in a confusing and disruptive manner. In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers competing services without any explanation. The use on Respondent's web site relating to competing insurance services suggests that Respondent is aware of Complainant. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. (See Health Republic Insurance Company v Above.com Legal, FA 1506001622088 (Forum July 10, 2015)(The use of a domain name’s resolving web site to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy 4 (b)(iii)); see also Staples Inc. and Staples the Office Superstores, LLC v Hanna El Hin/Dtaples.com, FA 1404001557007 (Forum June 6, 2014) (Therefore, the panel finds that respondent registered and is using the disputed domain name in bad faith under Policy 4 (b)(iv) because the respondent is using the disputed domain name to host third party links to complainant’s competitors from which respondent is presumed to obtain some commercial benefit.)
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(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 <teendrivingstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 27, 2017
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