State Farm Mutual Automobile Insurance
Company v. Unasi Management Inc.
Claim Number: FA0504000467825
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented by Janice K. Forrest, of State
Farm Mutual Automobile Insurance Company, One State Farm Plaza A3,
Bloomington, IL 61710. Respondent is Unasi Management Inc. (“Respondent”),
Galerias Alvear, Via Argentina 2, Oficina #3, Zona 5, Panama 5235.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <sstatefarm.com>,
< statefarmn.com>, and <statefarminsrance.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 27, 2005.
On
April 29, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <sstatefarm.com>, <statefarmn.com>,
and < statefarminsrance.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
May 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 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@sstatefarm.com, postmaster@statefarmn.com, and
postmaster@statefarminsrance.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 26, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sstatefarm.com>, <statefarmn.com>,
and <statefarminsrance.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 <sstatefarm.com>,
<statefarmn.com>, and <statefarminsrance.com> domain
names.
3. Respondent registered and used the <sstatefarm.com>, <statefarmn.com>, and <statefarminsrance.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 1930. Complainant is in the business of both the
insurance and the financial services industries.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for variations of the STATE FARM mark (e.g., Reg. No.
1,979,585 issued June 11, 1996).
Complainant also holds a trademark registration for the STATE FARM
INSURANCE mark (Reg. No. 1,125,010, issued September 11, 1979).
Complainant
operates its website at the <statefarm.com> domain name, where it offers
detailed information relating to a variety of topics, including insurance and
financial service products, consumer information, and information about its independent
contractor agents.
Respondent
registered the <sstatefarm.com>
and <statefarmn.com> domain
names on March 28, 2005 and the <statefarminsrance.com>
domain name on April 1, 2005.
Respondent is using the disputed domain names to redirect Internet users
to a website that features links to various websites offering insurance related
services similar to those offered by 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
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 the marks in commerce.
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. The respondent has the burden of refuting
this assumption).
The <sstatefarm.com> and <statefarmn.com> domain names are
confusingly similar to Complainant’s STATE FARM mark because the domain names
incorporate Complainant’s mark in its entirety and add the letter “s” to the
mark in the <sstatefarm.com>
domain name and the letter “n” to the mark in the <statefarmn.com> domain name. The addition of these letters to Complainant’s mark does not
negate the confusingly similar aspects of Respondent’s domain names pursuant to
Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tencent Communications Corp., FA 93668
(Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and
<oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000)
(finding that <kelsonmd.com> is identical or confusingly similar to the
complainant’s federally registered service mark, “Kelson”).
The <statefarminsrance.com> domain
name registered by Respondent is confusingly similar to Complainant’s STATE
FARM INSURANCE mark because the domain name omits the letter “u” from the word
“insurance.” The omission of the letter
“u” in misspelling “insurance” does not distinguish the confusingly similar
aspects of the <statefarminsrance.com>
domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive); see
also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to the complainant's AMERICAN AIRLINES registered
marks); see also 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).
Furthermore, the
addition of the generic top-level domain “.com” does not distinguish the
disputed domain names from Complainant’s marks. See Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is
plainly identical to the complainant’s MYSTIC LAKE trademark and service mark);
see also Nike, Inc. v. Coleman,
D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net>
is identical to the complainant’s famous NIKE mark); see also Kabushiki Kaisha
Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that
the domain name <toshiba.net> is identical to the complainant’s trademark
TOSHIBA); see also Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "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 Snow Fun, Inc. v. O'Connor,
FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <sstatefarm.com>, <statefarmn.com>, and <statefarminsrance.com> domain
names. When a complainant establishes a
prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent lacks rights and legitimate interests in the disputed domain
names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); 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 the complainant that the respondent has no rights or
legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
The Panel may
accept all reasonable inferences and assertions in the Complaint as true
because Complainant has made a prima
facie showing and Respondent has not responded. 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 Desotec N.V. v. Jacobi 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); see also Charles
Jourdan AG. V. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the panel to draw adverse inferences from the respondent’s
failure to reply to the complaint).
Respondent is
using the disputed domain names to redirect Internet users to a website that
features links to various websites offering insurance related services similar
to those offered by Complainant.
Respondent’s use of domain names that are confusingly similar to
Complainant’s STATE FARM and STATE FARM INSURANCE marks to redirect Internet
users interested in Complainant’s services to a website that offers links to
various businesses similar to Complainant’s insurance business is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use of the domain
names pursuant to Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA
150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that the respondent’s use of the
disputed domain name, a simple misspelling of complainant’s mark, to divert
Internet users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8,
2000) (finding no rights or legitimate interests in the famous MSNBC mark where
the respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website); see
also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck
surfers into a site sponsored by the respondent hardly seems legitimate”).
Respondent has
not offered any proof, and there is no indication in the record, suggesting
that Respondent is commonly known by the <sstatefarm.com>,
<statefarmn.com>, or <statefarminsrance.com> domain
name. Furthermore, Respondent has
neither permission nor a license to use Complainant’s marks. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); 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); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
registration of domain names that misspell and add letters to Complainant’s
well-known registered mark, and the content of Respondent’s website suggest
that Respondent knew of Complainant’s rights in the STATE FARM and STATE FARM
INSURANCE marks. Furthermore,
Respondent is deemed to have actual or constructive knowledge of Complainant’s
marks due to Complainant’s registration with the United States Patent and
Trademark Office. Thus, the Panel finds
that Respondent registered and used the domain names in bad faith because
Respondent chose the <sstatefarm.com>,
<statefarmn.com>, and <statefarminsrance.com> domain
names based on the distinctive and well-known qualities of Complainant’s
mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); see also 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) (“[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 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’”).
The Panel also
finds that Respondent’s use of domain names that misspell and add letters to
Complainant’s STATE FARM and STATE FARM INSURANCE marks constitutes
typosquatting and evidence Respondent’s bad faith registration and use of the
disputed domain names pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also Zone Labs, Inc. v.
Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (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.).
Furthermore,
Respondent registered domain names containing confusingly similar versions of
Complainant’s well-known marks and did so for Respondent’s commercial
gain. Respondent’s domain names divert
Internet users searching under Complainant’s STATE FARM or STATE FARM INSURANCE
marks to Respondent’s commercial website.
The Panel infers that Respondent receives click-through fees through the
use of the domain names by diverting Internet users searching for Complainant
to Complainant’s competitors. The Panel
finds that Respondent registered and used the disputed domain names in bad
faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also 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).
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 <sstatefarm.com>,
<statefarmn.com>, and <statefarminsrance.com> domain
names be TRANSFERRED from Respondent
to Complainant.
Judge Harold Kalina (Ret.), Panelist
June 8, 2005
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