State Farm Mutual Automobile Insurance
Company v. E-Promote
Claim
Number: FA0502000432499
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is E-Promote (“Respondent”), 536
Leavenworth St., San Francisco, CA 94109.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statefarmhealthinsurance.com> and <statefarmhomeinsurance.com>,
registered with Wild West Domains, 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 February
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 2, 2005.
On
February 28, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <statefarmhealthinsurance.com>
and <statefarmhomeinsurance.com> are registered with Wild West
Domains, Inc. and that Respondent is the current registrant of the names. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West
Domains, 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
March 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 23, 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@statefarmhealthinsurance.com and
postmaster@statefarmhomeinsurance.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
March 29,2005, 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 <statefarmhealthinsurance.com>
and <statefarmhomeinsurance.com> domain names are confusingly
similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks.
2. Respondent does not have any rights or
legitimate interests in the <statefarmhealthinsurance.com> and <statefarmhomeinsurance.com>
domain names.
3. Respondent registered and used the <statefarmhealthinsurance.com>
and <statefarmhomeinsurance.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
State Farm Mutual Automobile Insurance Company, is a nationally known company
that has been doing business under the STATE FARM mark since as early as
1930. In 1999 Complainant opened a
federally chartered bank known as State Farm Bank where Complainant engages in
business in both the insurance and financial services industry.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the STATE FARM and STATE FARM INSURANCE marks (e.g., Reg. No.
1,979,585, issued June 11, 1996; Reg. No. 645,890, issued May 21, 1957,
respectively). Complainant also holds
trademark registrations in Canada and Mexico.
Complainant has vigorously used its STATE FARM and STATE FARM INSURANCE
marks in commerce for over 70 years and does not allow authorized parties to
use its marks as part of their Internet domain names.
Complainant
developed its Internet web presence in 1995 using the <statefarm.com>
domain name where consumers can access detailed information relating to a
variety of topics including Complainant’s insurance and financial service
products, consumer information and information about its independent contractor
agents.
Respondent
registered the <statefarmhealthinsurance.com> and <statefarmhomeinsurance.com>
domain names on July 21, 2004.
Respondent is using the disputed domain names to redirect Internet users
to a website at <insurecom.com> where a free insurance quote and
insurance related services are offered.
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 and STATE FARM INSURANCE marks through
registration with the United States Patent and Trademark Office and through
continuous use of its marks in commerce for over seventy 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. Respondent has the burden of refuting this
assumption).
The <statefarmhealthinsurance.com>
and <statefarmhomeinsurance.com> domain names registered by
Respondent are confusingly similar to Complainant’s marks because the domain
names incorporate Complainant’s marks in their entirety and deviate by merely
adding the generic or descriptive terms “health” and “home.” The mere addition of a generic or
descriptive word to a registered mark does not negate the confusing similarity
of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept.
14, 2000) (finding that combining the generic word “shop” with Complainant’s
registered mark “llbean” does not circumvent Complainant’s rights in the mark
nor avoid the confusing similarity aspect of the ICANN Policy); see also Marriott Int’l, Inc. v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark); see also PG&E Corp. v.
Anderson, D2000-1264 (WIPO Nov. 22, 2000) (“Respondent does not by adding
the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’
following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”).
Moreover, the
addition of the top-level domain “.com” does not sufficiently distinguish the
disputed domain names from Complainant’s STATE FARM and STATE FARM INSURANCE
marks. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . .
without legal significance since use of a gTLD is required of domain name
registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <statefarmhealthinsurance.com>
and <statefarmhomeinsurance.com> domain names. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain names. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name, it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also 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
rights or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interests in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); see also 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 Desotec N.V. v. Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent is
using the disputed domain names to redirect Internet users to a website at
<insurecom.com> where free insurance quotes and insurance related
services are offered. Respondent’s use
of domain names confusingly similar to Complainant’s STATE FARM and STATE FARM
INSURANCE marks to redirect Internet users interested in Complainant’s services
to a commercial website that offers similar insurance related services is
neither a use in connection with 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). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”); see
also Am. Online Inc. v. Shenzhen JZT
Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that
Respondent’s operation of website offering essentially the same services as
Complainant and displaying Complainant’s mark was insufficient for a finding of
bona fide offering of goods or services).
Furthermore,
Respondent lacks rights and legitimate interests in the <statefarmhealthinsurance.com>
and <statefarmhomeinsurance.com> domain names because
Respondent has not presented any evidence, and there is no proof in the record
suggesting that Respondent has established rights or legitimate interests in
the disputed domain names.
Additionally, nothing in the WHOIS domain name registration information
suggests that Respondent is commonly known by the domain names or by
Complainant’s family of marks.
Furthermore, Complainant did not authorize Respondent to use its
marks. Thus, Respondent has not
established rights or legitimate interests in the disputed domain names pursuant
to Policy ¶ 4(c)(ii). See 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); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
incorporating Complainant’s marks into its domain names in order to lead
Internet users to a website that offers similar insurance related
services. The Panel finds that
Respondent is intentionally creating a likelihood of confusion with Complainant’s
mark to attract Internet users to Respondent’s website for Respondent’s
commercial gain, pursuant to Policy ¶ 4(b)(iv). See 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 Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Additionally,
Respondent registered the confusingly similar domain name for the purpose of
disrupting Complainant’s business by redirecting Internet traffic intended for
Complainant to Respondent’s website, which offers similar insurance related
services. Registration of a domain name
confusingly similar to a competitor’s mark for the primary purpose of
disrupting the business of a competitor is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
See Lubbock Radio Paging v.
Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area); 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).
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 <statefarmhealthinsurance.com> and <statefarmhomeinsurance.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 12, 2005