State Farm Mutual Automobile Insurance
Company v. Unasi Management Inc.
Claim
Number: FA0503000442558
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”) One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Unasi Management Inc. (“Respondent”),
Galerias Alvear, Via Argentina 2, Ofincina #3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statefarmcareer.com>,
<statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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 March
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 18, 2005.
On
March 18, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <statefarmcareer.com>,
<statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 11, 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@statefarmcareer.com,
postmaster@statefarmbankclassiccreditcard.com and
postmaster@statefarmbankplatinumcreditcard.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
April 15, 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 <statefarmcareer.com>,
<statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>
domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarmcareer.com>,
<statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>
domain names.
3. Respondent registered and used the <statefarmcareer.com>,
<statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.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 operating under the STATE FARM mark since as early as 1930. Complainant offers services in the insurance
and financial industries.
Complainant owns
trademark rights to the STATE FARM mark through registration with the United
States Patent and Trademark Office (Reg. No. 645,890, issued May 21, 1957).
Complainant also
operates a website at <statefarm.com> where Complainant offers detailed
information relating to a variety of topics including its insurance and
financial service products, consumer information and information about its
independent contractor agents.
Respondent
registered the <statefarmcareer.com> domain name on February 7,
2005 and the <statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>
domain names on March 15, 2005.
Respondent is using the <statefarmcareer.com> domain name
to redirect Internet users to a website containing an error message stating
reasons why the website is not functioning.
Respondent is using the <statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>
domain names to re-route Internet users to a search engine website where links
to third party websites are also displayed.
These linked websites offer information and services pertaining to
credit card applications and various credit card companies. Additionally, among the links is one that
directs Internet users to a website that offers misleading information about
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."
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 that it has rights in the STATE FARM mark through registration with
the United States Patent and Trademark Office and through continuous use of its
mark in commerce for the last 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 <statefarmcareer.com>,
<statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>
domain names registered by Respondent are confusingly similar to Complainant’s
STATE FARM mark because the domain names incorporate Complainant’s STATE FARM
mark in its entirety and deviate from it only by adding generic or descriptive
phrases such as “career,” “bank classic credit card” or “platinum credit
card.” The mere addition of generic or
descriptive words to a registered mark does not negate the confusing similarity
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding
the <westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding that the domain name <bodyshopdigital.com> is confusingly
similar to Complainant’s THE BODY SHOP trademark); see also Yahoo! Inc. v. Zuccarini, D2000-0777
(WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names
incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities
marks, together with generic words such as ‘chat’ and ‘financial’ to be
confusingly similar to Complainant’s marks and likely to mislead Internet users
into believing that products and services offered by Respondents are being
sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names
and products and services offered).
Moreover,
the addition of the generic top-level domain “.com” is irrelevant in
determining whether the disputed domain names are confusingly similar to
Complainant’s STATE FARM mark. 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 Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark SONY”
and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed 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 name. 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 right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such rights or
legitimate interests do 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 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. 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).
While the <statefarmcareer.com>
domain name resolves to a website containing and error message stating the
webpage did not exist, Respondent’s <statefarmbankclassiccreditcard.com>
and <statefarmbankplatinumcreditcard.com> domain names redirect
Internet users to a search engine website where Internet users are provided
links to various third party websites
offering information and services pertaining to credit card applications and
various credit card companies.
Additionally, the website also displays a link for an unauthorized
website offering information about Complainant’s company. The Panel assumes that Respondent receives
click-through fees for redirecting Internet users to these websites. The Panel finds that Respondent’s use of domain
names that are confusingly similar to Complainant’s STATE FARM mark to redirect
Internet users interested in Complainant’s services to a search engine website
that offers links to competing websites is not 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 Pioneer Hi-Bred Int’l Inc. v. Chan,
FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have
rights or legitimate interests in a domain name that used Complainant’s mark
and redirected Internet users to a website that pays domain name registrants
for referring those users to its search engine and pop-up advertisements); 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").
Moreover,
Respondent is not commonly known by the disputed domain names, and does not
have Complainant’s authorization to offer services under Complainant’s STATE
FARM mark. Respondent has not presented
any evidence and there is no proof in the record suggesting that Respondent is
commonly known by the disputed domain names.
Therefore, 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
incorporated Complainant’s STATE FARM mark in its domain names to redirect
Internet users to a website that offers links to competing third party websites
that offer financial and credit card-related services. The Panel assumes that Respondent receives
click-through fees and 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 Kmart v. Kahn, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv); 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); 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).
Moreover,
Respondent’s multiple registrations of domain names incorporating different
versions of Complainant’s mark demonstrates Complainant’s intent to register
confusingly similar domain names for the purpose of disrupting Complainant’s
business. Respondent redirects Internet
traffic intended for Complainant to a search engine website where links to
Complainant’s competitors and third party websites offering financial and
credit card-related services are offered.
Registration of domain names confusingly similar to Complainant’s mark
for the purpose of disrupting Complainant’s business 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).
Furthermore,
Respondent’s subsequent registration of two domain names incorporating
Complainant’s mark after registering the <statefarmcareer.com>
domain name evidences Respondent’s actual or contructive knowledge of
Complainant’s mark, and constitutes bad faith registration 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 Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
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 <statefarmcareer.com>,
<statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
April 27, 2005
National Arbitration Forum
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