State Farm Mutual Automobile Insurance
Company v. The Life Insurance Settlement Solutions Co. a/k/a Timothy Mattek
a/k/a The Life Settlement Company
Claim
Number: FA0503000445213
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is The Life Insurance Settlement Solutions Co.
a/k/a Timothy Mattek a/k/a The Life Settlement Company (“Respondent”),
11476 Sundance Lane, Boca Raton, FL 33428.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statefarmlifeassignments.com> and <statefarmlifesettlements.com>,
registered with Go Daddy Software, Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 23, 2005.
On
March 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <statefarmlifeassignments.com>
and <statefarmlifesettlements.com> are registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the names. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 23, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 12, 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@statefarmlifeassignments.com, and
postmaster@statefarmlifesettlements.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 19, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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 <statefarmlifeassignments.com>
and <statefarmlifesettlements.com> domain names are confusingly
similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarmlifeassignments.com> and <statefarmlifesettlements.com>
domain names.
3. Respondent registered and used the <statefarmlifeassignments.com>
and <statefarmlifesettlements.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 recognized
company engaged in the business of insurance and financial services. Complainant has been operating under the
STATE FARM mark since as early as 1930.
Complainant owns trademark rights in 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 the <statefarm.com> domain name where Complainant
offers detailed information relating to a variety of topics that include
insurance and financial service products, consumer information and information
about its independent contractor agents.
Respondent
registered the <statefarmlifesettlements.com> domain name on
September 11, 2004 and the <statefarmlifeassignments.com> domain
name on September 27, 2005. Respondent
is using the disputed domain names to redirect Internet users to a website at
<seniorsshouldknow.org>, a website that is under construction but
includes links set up for the future offering of information and services
related to health and insurance issues.
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 <statefarmlifeassignments.com>
and <statefarmlifesettlements.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 “life
assignment,” and “life settlements.”
The mere addition of generic or descriptive words to a registered mark
does not negate the confusing similarity of Respondent’s domain names 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 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) was 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 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
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).
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).
Each of the
domain names has been registered for at least six months and neither of them
resolves to a fully developed website.
Instead, they resolve to a website that is under construction and
indicates that when it is fully developed it will provide links to websites
related to Complainant's services. As
mentioned earlier, once Complainant makes a prima facie case that
Respondent lacks rights and legitimate interests in the domain names, the
burden shifts to Respondent. Respondent
has failed to provide evidence that it has rights or legitimate interests in
the domain names. Respondent's domain
names, which are confusingly similar to Complainant's mark, resolve to a
website that is under construction.
Respondent's use of the domain names to resolve to a website under
construction is insufficient to establish that Respondent has rights or
legitimate interests in the domain names pursuant to Policy ¶¶ 4(c)(i) or
(iii). See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that
the "under construction" page, hosted at the disputed domain name,
did not support a claim of rights or legitimate interests under Policy ¶
4(a)(ii)); see also Broadcom Corp.
v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent's use of the disputed domain name to display an "under
construction" page did not constitute a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii)).
Furthermore,
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 intentionally
registered domain names that are likely to confuse Internet users and
cause them to believe any site hosted at the domain names would be affiliated with
or endorsed by Complainant. This
demonstrates bad faith under the Policy.
See Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith
registration and use where it is "inconceivable that the respondent could
make any active use of the disputed domain names without creating a false
impression of association with the Complainant"); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the "domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests 'opportunistic bad faith'").
Furthermore,
Respondent’s registration of two domain names incorporating Complainant’s
registered and famous mark 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 <statefarmlifeassignments.com> and <statefarmlifesettlements.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 3, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum