State Farm Mutual Automobile Insurance
Company v. Domains-4sale.com c/o Administrator
Claim
Number: FA0501000400555
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Domains-4sale.com c/o Administrator (“Respondent”), 4200 Mary Gates Dr. N.E., Seattle,
WA 98105.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefarn.com>, registered with Onlinenic,
Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 14, 2005.
On
January 14, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <statefarn.com> is
registered with Onlinenic, Inc. and that Respondent is the current registrant
of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic,
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
January 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 14, 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@statefarn.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
February 24, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Honorable Paul A. Dorf (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." 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 makes the following assertions:
1. Respondent’s <statefarn.com>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarn.com> domain name.
3. Respondent registered and used the <statefarn.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
State Farm, is a nationally known company that has been doing business under
the STATE FARM mark since 1930.
Complainant engages in business in both the insurance and the financial
services industry. Complainant also has
established a nationally recognized presence on televised and other media.
Complainant
developed its Internet web presence in 1995 using the <statefarm.com>
domain name. At its website,
Complainant offers detailed information relating to a variety of topics
including its insurance and financial services products, consumer information,
and information about its independent contractor agents. Complainant has expended substantial time,
effort and funds to develop its website as a primary source of Internet
information for the products, services and information it provides.
Complainant has
registered its STATE FARM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent
registered the <statefarn.com> domain name on October 4,
2002. Respondent’s domain name resolves
to an online store website featuring various products, ranging from baby items
to electronics.
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 rights in the STATE FARM mark through registration with the USPTO
and through continuous use of the mark in commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also 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.”).
Respondent’s <statefarn.com>
domain name is merely a typosquatted variation of Complainant’s STATE FARM
mark. Respondent’s domain name merely
replaces the letter “m” in the word “farm” with the letter “n.” Such a minor alteration is not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Neiman
Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum
July 23, 2002) (finding the disputed domain name was a simple misspelling of
Complainant’s mark and was a classic example of typosquatting, which “renders the domain name confusingly similar to the altered
famous mark”); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding
that Respondent's <marrriott.com> domain name was confusingly
similar to Complainant's MARRIOTT mark because "Respondent's typosquatting,
by its definition, renders the domain name confusingly similar to
Complainant's mark").
Furthermore,
the addition of the generic top-level domain “.com” and the omission of the
space between the terms of Complainant’s mark are insufficient to distinguish
Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”); Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless clearly contradicted by the evidence).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <statefarn.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the domain name, which contains a confusingly similar version of
Complainant’s STATE FARM mark, to operate an online store. Such use 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 pursuant to Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users to an unrelated business was not a
bona fide offering of goods or services); see also eBay Inc. v. Sunho
Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of
complainant’s entire mark in infringing domain names makes it difficult to
infer a legitimate use").
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<statefarn.com> domain name or is authorized to register domain
names featuring Complainant’s STATE FARM mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain name 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).
Moreover, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s STATE FARM mark is evidence that Respondent lacks rights and
legitimate interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that
Respondent lacked rights and legitimate interests in the disputed
domain names because it "engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter 'x' instead of the letter
'c.'"); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com> and <ltdcommodaties.com> disputed domain
names were typosquatted versions of Complainant's LTD COMMODITIES mark and
"Respondent's 'typosquatting' is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <statefarn.com> domain name, which contains a
confusingly similar version of Complainant’s STATE FARM mark, to operate an
online store. Internet users searching
for Complainant online who access Respondent’s domain name may become confused
as to Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the
domain name is evidence that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv).
See 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); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
Furthermore,
Respondent registered the <statefarn.com> domain name with actual
or constructive knowledge of Complainant’s rights in the STATE FARM mark due to
Complainant’s registration of the mark with the USPTO and the immense fame that
Complainant’s mark has acquired.
Registration of a domain name that includes another’s mark, despite
knowledge of the mark holder’s rights is tantamount to bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the
USPTO, a status that confers constructive notice on those seeking to register
or use the mark or any confusingly similar variation thereof.”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it).
Moreover, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s STATE FARM mark is evidence that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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. "Typosquatting, itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii)."); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting, in which Respondent has engaged, has been deemed behavior in bad
faith.").
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 <statefarn.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
March 7, 2005
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