State Farm Mutual Automobile Insurance
Company v. Domain Management
Claim Number: FA0510000575614
PARTIES
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, A-3, Bloomington, IL 61710.
Respondent is Domain Management (“Respondent”),
3801 N. Capital of Texas Highway, E-240-167, Austin, TX 78746.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <state-farm.us>,
registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on October 11, 2005; the Forum received a hard
copy of the Complaint on October 12, 2005.
On October 14, 2005, iHoldings.com, Inc. d/b/a DotRegistrar.com
confirmed by e-mail to the Forum that the domain name <state-farm.us> is registered with iHoldings.com, Inc. d/b/a
DotRegistrar.com and that Respondent is the current registrant of the
name. 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 the U.
S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 18, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 7, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, using the same contact
details and methods as were used for the Commencement Notification, the Forum
transmitted to the parties a Notification of Respondent Default.
On November 16, 2005, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the
following assertions:
Complainant has been doing business in the marketing of insurance and other financial services under the STATE FARM mark since 1930.
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for variations of the STATE FARM mark.
Complainant operates its website at the <statefarm.com> domain name, where it offers information relating to insurance and financial services products as well as related consumer information and information about its independent agents.
Respondent’s <state-farm.us> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent registered the <state-farm.us> domain name on July 22, 2005.
Respondent uses
the subject domain name to redirect Internet users to a website that features
links to insurance-related sites in competition with Complainant’s business.
Respondent does not have any
rights to or legitimate interests in the <state-farm.us> domain name.
Respondent has registered and is
using the <state-farm.us>
domain name in bad faith.
B. Respondent failed to submit a response in this proceeding.
FINDINGS
(1) the domain name registered by the Respondent is substantively
identical, and therefore confusingly similar, to a trademark in which
Complainant has rights;
(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.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the subject domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has demonstrated by
undisputed evidence that it has rights in the STATE FARM mark through
registration of the mark with the USPTO and through its use of the mark in
commerce. See Am. Online, Inc. v. Thomas
P. Culver Enters., D2001-0564 (WIPO June
18, 2001); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004).
Respondent’s <state-farm.us> domain name is confusingly similar to
Complainant’s STATE FARM mark because Respondent’s domain name incorporates
Complainant’s mark in its entirety and merely adds a hyphen and the
country-code “.us.” The Panel finds
that such minor alterations to Complainant’s registered mark do not negate the
confusingly similar character of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Health
Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003)
(“[T]he addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004); and Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
Thus the Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <state-farm.us> domain name. Once Complainant has, as here, made a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). And, because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does conclude that Respondent has no rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Complainant also asserts, and
Respondent does not deny, that Respondent is using the <state-farm.us> domain name to redirect Internet users to a
website that features links to insurance-related websites in 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 interested in Complainant’s products to a
website that offers goods or services in 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)(ii), nor is it a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iv). 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.”); 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.”).
Moreover, there is no evidence in the record suggesting that Respondent is commonly known by the <state-farm.us> domain name. Thus, Respondent has not established rights to or legitimate interests in the <state-farm.us> domain name pursuant to Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001); and Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001).
Accordingly, the Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
It is uncontested that Respondent is using the <state-farm.us> domain name, which is confusingly similar to Complainant’s STATE FARM mark, to redirect Internet users to a website that features links to insurance-related websites in competition with Complainant’s business. The Panel finds that, in the circumstances here presented, such use, without more, is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000).
In addition, no evidence to the contrary appearing in the record, the Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is confusingly similar to Complainant’s mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <state-farm.us> 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000).
Moreover, Complainant contends, and
Respondent does not dispute, that Respondent registered the <state-farm.us>
domain name with actual or constructive knowledge of Complainant’s rights in
the STATE FARM trademark by virtue of Complainant’s prior registration of that
mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such actual or constructive knowledge evidences bad faith
registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For all of these reasons, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required under ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is
Ordered that the <state-farm.us>
domain name be TRANSFERRED forthwith from Respondent to
Complainant.
Terry F. Peppard, Panelist
Dated: November 30, 2005
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