State Farm Mutual Automobile Insurance
Company v. Patrick Williamson
Claim
Number: FA0507000510018
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”),
represented by Janice K. Forrest, One State Farm Plaza, A-3,
Bloomington, IL 61710. Respondent is Patrick Williamson (“Respondent”), 193A
Holloway Rd., London, N7 8DJ, GB.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sttefarm.com>, registered with Atoz.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 11, 2005.
On
July 11, 2005, Atoz confirmed by e-mail to the National Arbitration Forum that
the domain name <sttefarm.com> is registered with Atoz and that
Respondent is the current registrant of the name. Atoz has verified that Respondent is bound by the Atoz 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
July 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 2, 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@sttefarm.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
August 8, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sttefarm.com>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <sttefarm.com> domain name.
3. Respondent registered and used the <sttefarm.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 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 (“USPTO”) for the STATE FARM mark (E.g., Reg. No. 1,979,585
issued June 11, 1996).
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 <sttefarm.com> domain name on March 31, 2005. Respondent is using the disputed domain name
to redirect Internet users to a website featuring links to insurance related
services in direct competition with Complainant’s business.
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. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. See 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 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.").
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 mark through registration with the USPTO
and through continuous use of the mark 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 <sttefarm.com>
domain name registered by Respondent is confusingly similar to Complainant’s
STATE FARM mark because the domain name omits the letter “a” from the term
“state.” The omission of the letter “a”
in misspelling the term “state” does not differentiate the confusingly similar
aspects of Respondent’s domain name from Complainant’s mark pursuant to Policy
¶ 4(a)(i). Furthermore, the addition of
the generic top-level domain “.com” does not distinguish the disputed domain
name from Complainant’s mark. 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); 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <sttefarm.com>
domain name. 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 does not have rights or legitimate interests in the
disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent does not have 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
or 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 does not have 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).
Respondent is
using the <sttefarm.com> domain name to redirect Internet users to
a website featuring links to insurance related services in direct competition
with Complainant’s business.
Respondent’s use of a domain name that is confusingly similar to Complainant’s
STATE FARM mark to redirect Internet users to a website featuring links to
insurance related services in direct competition with Complainant’s business is
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); 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 DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
Respondent has
not offered any proof, and there is no indication in the record, suggesting
that Respondent is commonly known by the <sttefarm.com> domain
name. Furthermore, Respondent has
neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name 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
registered a domain name containing a confusingly similar version of
Complainant’s well-known mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet
users searching under Complainant’s STATE FARM mark to Respondent’s commercial
website. The Panel infers that
Respondent receives click-through fees for diverting Internet users searching
for Complainant to Complainant’s competitors.
The Panel finds that Respondent registered and used the disputed domain
name 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).
Moreover,
Respondent’s registration of a domain name that misspells 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 mark. Respondent is deemed to have actual or
constructive knowledge of Complainant’s mark due to Complainant’s registration
with the USPTO. Thus, the Panel finds
that Respondent registered and used the domain name in bad faith because
Respondent chose the <sttefarm.com> domain name 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’”).
Furthermore, the
Panel finds that Respondent’s use of a domain name that misspells Complainant’s
STATE FARM mark by omitting the letter “a” from the term “state” constitutes
typosquatting and evidences Respondent’s bad faith registration and use of the
disputed domain name 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) (where 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).
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 <sttefarm.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
August 22, 2005
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