State Farm Mutual Automobile Insurance
Company v. Digi Real Estate Foundation
Claim
Number: FA0504000463105
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 N7 8DJ, PA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefrm.com>, registered with Direct
Information Pvt. Ltd., d/b/a Directi.com.
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 April
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 15, 2005.
On
April 16, 2005, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by
e-mail to the National Arbitration Forum that the domain name <statefrm.com>
is registered with Direct Information Pvt. Ltd., d/b/a Directi.com and that
Respondent is the current registrant of the name. Direct Information Pvt. Ltd.,
d/b/a Directi.com has verified that Respondent is bound by the Direct
Information Pvt. Ltd., d/b/a Directi.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
April 18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 9, 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@statefrm.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
May 13, 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 <statefrm.com>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefrm.com> domain name.
3. Respondent registered and used the <statefrm.com>
domain name 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 1930. Complainant engages in business in both the
insurance and the financial services industries. 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 <statefrm.com> domain name on January 12,
2004. Respondent’s domain name resolves
to a website that features links to competing automobile insurance providers.
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 of the mark with
the USPTO and through continuous use of the mark in commerce since 1930. 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 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).
Respondent’s
<statefrm.com> domain name is confusingly similar to Complainant’s
STATE FARM mark because the domain name incorporates the mark in its entirety
and merely deletes the letter “a” from the term “farm” in Complainant’s
mark. Such a minor alteration is not
enough to overcome a finding of confusing similarity between Respondent’s
domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See State
Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15,
2000) (finding that the domain name <statfarm.com> is confusingly similar
to the complainant’s STATE FARM mark); see also Compaq Info. Techs. Group,
L.P. v. Seocho, FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to the complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark).
Furthermore, Respondent’s addition of the generic top-level domain
“.com” and the omission of the space between the terms of Complainant’s STATE
FARM mark is insufficient to distinguish Respondent’s domain name from the mark
pursuant to Policy ¶ 4(a)(i). See
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”); 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.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Vertical Solutions Mgmt., Inc. v. webnet-Mktg., 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 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.”).
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
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <statefrm.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 <statefrm.com> domain name, which is confusingly similar
to Complainant’s STATE FARM mark, to operate a website that features links to
competing automobile insurance providers.
Such competing 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with the complainant, was not a bona fide offering of goods or services); see
also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that the respondent had no rights or legitimate interests in a domain
name that used the complainant’s mark to redirect Internet users to a
competitor’s website).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names incorporating
Complainant’s STATE FARM mark. Thus,
the Panel finds that Respondent has not established rights or legitimate
interests in the <statefrm.com> 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 the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Moreover, the
fact that Respondent’s <statefrm.com> domain name is merely a
typosquatted variation of Complainant’s STATE FARM mark is further evidence
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). See
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."); see also 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.'").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <statefrm.com> domain name to
operate a domain name that features links to competing automobile insurance
providers. The Panel finds that such
use constitutes disruption and is evidence that Respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that the respondent diverted business from the complainant
to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Because
Respondent’s domain name is confusingly similar to Complainant’s STATE FARM
mark, consumers accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the Complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Furthermore,
Respondent registered the <statefrm.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. Moreover, the Panel infers that Respondent
registered the domain name with actual knowledge of Complainant’s rights in the
mark due to the obvious connection between Respondent’s website and Complainant’s
business. Registration of a domain name
that is confusingly similar to another’s mark despite actual or constructive
knowledge of the mark holder’s rights is tantamount to bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“[T]he 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the complainant’s mark when it registered the subject
domain name”).
Additionally,
the fact that Respondent’s <statefrm.com> domain name is merely a
typosquatted variation of Complainant’s STATE FARM mark is further evidence
that Respondent registered and used the disputed 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); 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 stating, "[t]yposquatting itself is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii).").
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 <statefrm.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
May 27, 2005
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