State Farm Mutual Automobile Insurance Company v. Alejandro Rodriguez
Claim Number: FA0512000612779
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL, 61710. Respondent is Alejandro Rodriguez (“Respondent”), 28 Oak Drive, New Hyde Park, New York, NY 11040.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <segurostatefarm.com>, registered with Go Daddy Software, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2005.
On December 21, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <segurostatefarm.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 December 21, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2006 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@segurostatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Complainant is a widely known insurance and financial services company that has been doing business under the STATE FARM mark since 1930.
Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark, including one issued on June 11, 1996.
Complainant has never authorized Respondent to use its STATE FARM mark, whether in a domain name or otherwise.
Respondent registered the disputed <segurostatefarm.com> domain name on November 12, 2005.
Respondent uses the disputed domain name to redirect Internet users to Respondent’s commercial website, which features links to an insurance and financial services website not affiliated with Complainant.
Respondent is not commonly known by the subject domain name.
Respondent’s <segurostatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the domain name <segurostatefarm.com>.
Respondent registered and uses the <segurostatefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or 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) Respondent has registered and is using the same domain name in bad faith.
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:
i. the domain name registered by Respondent is confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the STATE FARM mark
through its registration of the mark with the USPTO. See Innomed Tech., 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 Am. Online, Inc. v. Thomas P. Culver Enters.,
D2001-0564 (WIPO June 18, 2001).
Complainant
alleges, and Respondent does not deny, that Respondent’s domain
name <segurostatefarm.com> is confusingly similar to Complainant’s STATE
FARM mark. Complainant’s allegation is sustained
because Respondent’s domain name incorporates Complainant’s mark in its
entirety and merely adds “seguro” and the generic top-level domain “.com.” “Seguro,” Spanish for “insurance,” directly
describes an important component of Complainant’s business.
The Panel finds that making such alterations to Complainant’s registered mark in framing the disputed domain name does not negate the confusingly similar character of the name pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); likewise see 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 to a competing mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant also alleges Respondent does not have rights or legitimate interests in the <segurostatefarm.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does conclude that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that a respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because the information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent does not have rights or legitimate interests in a contested domain name is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest exists).
Respondent has offered no evidence, and there is no evidence in the record to suggest, that Respondent is commonly known by the <segurostatefarm.com> domain name. Thus, Respondent has not established rights or legitimate interests in the domain name <segurostatefarm.com> pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
Moreover, Complainant asserts, and Respondent has failed to
deny, that Respondent is using the <segurostatefarm.com> domain name to direct
Internet users to Respondent’s commercial website, which features links to a
competing insurance and financial services website. Respondent’s use of a domain name confusingly similar to
Complainant’s mark to direct Internet users interested in Complainant’s
products to a website offering 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)(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.” 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.” See
further Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb.
Forum Dec. 4, 2001).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
It is uncontested that Respondent is using the <segurostatefarm.com> domain name, which is confusingly similar to Complainant’s STATE FARM mark, to redirect Internet users to Respondent’s commercial website, which features goods and services that compete with Complainant’s business. The Panel finds that such use 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) (finding that a respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); to the same effect, see Puckett v. Miller, D2000-0297 (WIPO June 12, 2000).
The Panel infers from the evidence of record 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 STATE FARM mark, Internet users accessing Respondent’s domain name are likely to become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <segurostatefarm.com> 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 a respondent profits from its diversionary use of a 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, it is evident from the record in this proceeding
that Respondent registered the contested domain name with at least constructive
knowledge of Complainant’s rights in the STATE FARM mark 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 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.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <segurostatefarm.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 22, 2006
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