State Farm Mutual Automobile Insurance
Company v. Digi Real Estate Foundation
Claim
Number: FA0411000366186
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Digi Real Estate Foundation (“Respondent”),
P.O. Box 7-5324, Panama City.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <stateefarm.com> and <statefarmm.com>,
registered with Bizcn.com, Inc.
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.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
17, 2004; the National Arbitration Forum received a hard copy of the Complaint
on November 18, 2004.
On
December 14, 2004, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <stateefarm.com> and <statefarmm.com>
are registered with Bizcn.com, Inc. and that Respondent is the current
registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound
by the Bizcn.com, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
December 14, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 3, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@stateefarm.com and postmaster@statefarmm.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 6, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <stateefarm.com> and
<statefarmm.com> domain names are confusingly similar to
Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <stateefarm.com> and <statefarmm.com>
domain names.
3. Respondent registered and used the <stateefarm.com>
and <statefarmm.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, State Farm Mutual Automobile Insurance
Company, conducts business in both the insurance and financial services
industries.
Complainant holds trademark registrations in several countries and with
the United States Patent and Trademark Office for the STATE FARM mark (Reg. No.
1,979,585 issued June 11, 1996), the STATE FARM INSURANCE mark (Reg. No.
1,125,010 issued Sept. 11, 1979) and numerous other marks incorporating STATE
FARM. Complainant first began using the
STATE FARM mark in 1930 and has expended substantial time, effort and money to
promote the STATE FARM mark and to develop the goodwill associated with its
mark.
Complainant opened a Federally Chartered Bank known as State Farm Bank in
1999. Furthermore, Complainant began
developing its Internet presence in 1995 with the use of its website at the
<statefarm.com> domain name, which was registered on May 24, 1995. This website is now the primary source of
information on the Internet regarding the products, services and information
provided by Complainant.
Respondent registered the <stateefarm.com> and <statefarmm.com> domain
names on October 16, 2004. Respondent
is using the disputed domain names to divert Internet users to websites that
feature a generic search engine and display links to various competitors of
Complainant in the insurance and financial services industries. Respondent presumably profits from this
diversion through click-through fees.
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."
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.
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.
Complainant has
established in this proceeding that it has rights in the STATE FARM mark
through registration with the United States Patent and Trademark Office and by
continuous use of its mark in commerce for the last seventy-five years. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that Respondent has the burden of refuting this assumption).
The <stateefarm.com>
and <statefarmm.com> domain names registered by Respondent are
confusingly similar to Complainant’s STATE FARM mark because the domain names
incorporate Complainant’s mark in its entirety, adding only the letter “e” or
the letter “m.” By simply adding a
letter to Complainant’s registered mark, Respondent has not rendered the domain
names distinctive or negated the confusing similarity of Respondent’s domain
names pursuant to Policy ¶ 4(a)(i).
See Reuters Ltd. v. Global Net
2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name
which differs by only one letter from a trademark has a greater tendency to be
confusingly similar to the trademark where the trademark is highly
distinctive); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <stateefarm.com>
and <statefarmm.com> domain names, which contain complete
versions of Complainant’s mark.
Furthermore, since Complainant has made a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent has failed to respond to the
Complaint and the Panel will, therefore, assume that Respondent lacks rights
and legitimate interests in the disputed domain names. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by Complainant that Respondent has no right or legitimate interest is
sufficient to shift the burden of proof to Respondent to demonstrate that such
a right or legitimate interest does exist); see also Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible evidence
that substantiates its claim of rights and legitimate interests in the domain
name); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Additionally,
Complainant has made a prima facie showing and Respondent failed to
respond to the Complaint. Thus, the
Panel is entitled to accept all reasonable allegations and inferences in the
Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that 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.”).
The <stateefarm.com>
and <statefarmm.com> domain names divert Internet users to
websites that feature a generic search engine as well as links to various
insurance products and services, including those of several of Complainant’s
competitors. Respondent’s use of domain
names that are confusingly similar to Complainant’s STATE FARM mark to profit
by redirecting Internet users interested in Complainant’s products and services
to a websites that display search engines and links to Complainant’s
competitors is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot
Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s
diversionary use of Complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that Respondent’s diversionary use of Complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to competitors of Complainant, was not a bona fide offering of goods or
services); see also State Farm
Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000)
(“[U]nauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or
services.”).
Furthermore,
Complainant asserts the Respondent is not commonly known by the <stateefarm.com>
and <statefarmm.com> domain names and that Complainant has not
authorized Respondent to use its STATE FARM mark or to register the disputed
domain names. Thus, the Panel concludes
that Respondent has not established rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <stateefarm.com> and <statefarmm.com>
domain names to attract Internet users interested in Complainant’s STATE FARM
goods and services to Respondent’s websites, which feature links to products
and services offered by Complainant’s competitors. Thus, Respondent is attempting to profit through click-through
fees by using domain names confusingly similar to Complainant’s mark to create
a likelihood of confusion as to the affiliation of Respondent’s websites with
Complainant’s STATE FARM mark. The
Panel finds that Respondent’s practice of diversion for commercial gain is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent
is taking advantage of the recognition that eBay has created for its mark and
therefore profiting by diverting users seeking the eBay website to Respondent’s
site).
Complainant
conducts business in the insurance and financial services industries. Respondent uses the <stateefarm.com>
and <statefarmm.com> domain names to divert Internet users to
websites that contain links to Complainant’s competitors in the insurance and
financial services industries. Thus,
the Panel determines that Respondent registered the disputed domain names for
the primary purpose of disrupting Complainant’s business by linking the domain
names to Complainant’s competitors and that this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Gen. Media Communications,
Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad
faith where a competitor of Complainant registered and used a domain name
confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web
site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
While proof of
the existence of any of the four circumstances listed under Policy ¶ 4(b) is
evidence of bad faith registration and use of a domain name, this list is not
exhaustive. Additional factors and
circumstances can also be used to support findings of bad faith registration
and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
By using the <stateefarm.com>
and <statefarmm.com> domain names, which differ from
Complainant’s STATE FARM mark by the mere addition of the letter “e” or “m,”
Respondent is attempting to benefit from typographical errors made by Internet
users seeking Complainant’s products and services. This practice of typosquatting is to siphon Internet users
interested in Complainant’s STATE FARM mark to Respondent’s own websites is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is
the intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003)
(finding that the <dermatalogica.com> domain name was a typosquatted
version of Complainant’s DERMALOGICA mark and state, “[t]yposquatting itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see
also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15,
2003) (finding that Respondent registered and used the <zonelarm.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was
merely a typosquatted version of Complainant’s ZONEALARM mark).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <stateefarm.com> and <statefarmm.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated: January 20, 2005