State Farm Mutual Automobile Insurance
Company v. Dan Trapp
Claim
Number: FA0507000525982
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Dan Trapp (“Respondent”), 4209 Taku
Blvd, Juneau, Alaska 99801.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwstatefarm.com>, registered with Go
Daddy Software, Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 4, 2005.
On
July 29, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <wwstatefarm.com> domain name is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. 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
August 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline
of August 25, 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@wwstatefarm.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 1, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
James A. Carmody, Esq., 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 <wwstatefarm.com>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <wwstatefarm.com> domain name.
3. Respondent registered and used the <wwstatefarm.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 is engaged in both the insurance and financial services industries. Complainant has established a nationally
recognized presence on televised and other media.
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 <wwstatefarm.com> domain name on May 4, 2005. The domain name redirects Internet users to
a website at “http://www.quoteserv.com/tracker.php/WWSF,” which offers
“real-time” quotes from insurance providers and states that a person can purchase
insurance directly from “some of America’s top auto insurance companies,” all
of which are direct competitors of Complainant. The Panel infers that Respondent earns referral fees for
diverting Internet users to this website.
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 has
established rights in the STATE FARM mark through registration of the mark with
the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("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’s <wwstatefarm.com>
domain name is confusingly similar to Complainant’s STATE FARM mark, as the
domain name incorporates the mark entirely and adds the letters “ww.” The Panel finds that such a minor addition
is not enough to distinguish Respondent’s domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (holding that the deliberate introduction of errors or changes, such as
the addition of a fourth “w” or the omission of periods or other such “generic”
typos do not change respondent’s infringement on a core trademark held by the
complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat.
Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a the respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s marks).
Furthermore,
neither the addition of the generic top-level domain “.com” nor the omission of
the space between the terms of Complainant’s mark is sufficient to overcome a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302
(Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>,
is identical to Complainant's KIOTI mark because adding a top-level domain name
is irrelevant for purposes of Policy ¶ 4(a)(i).”); 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.
Complainant has
asserted that Respondent has no rights or legitimate interests in the <wwstatefarm.com>
domain name. Respondent, by not
submitting a response, has failed to rebut Complainant’s assertion. Thus, the Panel interprets Respondent’s
failure to respond as evidence that Respondent lacks rights and legitimate
interests in the disputed 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, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the
respondent has no rights or legitimate interests in the domain name because the
respondent never submitted a response or provided the panel with evidence to
suggest otherwise). The Panel will
analyze whether Respondent could meet its burden of establishing rights or
legitimate interests for purposes of Policy ¶ 4(a)(ii).
Complainant
asserts that Respondent is neither commonly known by the disputed domain name
nor licensed to register domain names featuring Complainant’s STATE FARM
mark. Furthermore, the WHOIS
information for the disputed domain name identifies Respondent as “Dan
Trapp.” Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the <wwstatefarm.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Moreover,
Respondent is using the confusingly similar domain name to divert Internet
users to a website that offers insurance quotes from companies that directly
compete with Complainant. The Panel
finds that 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 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.”); see also Coryn Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar domain name to divert Internet users to a website
that offers insurance quotes from companies that are direct competitors of
Complainant. The Panel infers that
Respondent earns referral fees through its diversionary use of the disputed
domain name. Thus, the Panel finds that
Respondent is capitalizing on Internet user confusion and that such use is
evidence of 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 Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.”).
Furthermore,
Respondent registered the <wwstatefarm.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 disputed domain name with actual knowledge of Complainant’s mark
due to the clear connection between the content offered on Respondent’s website
and Complainant’s business. The Panel
finds that 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 Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); 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”).
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 <wwstatefarm.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
September 15, 2005
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