State Farm Mutual Automobile Insurance Company v. Octocat Ltd
Claim Number: FA0604000676327
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Octocat Ltd (“Respondent”), 53 Brett Drive, Bromham, Bedford MK43 8RE, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.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.
Louis E. Condon, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On Apr 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 April 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@state-farm-auto-insurance-guide.com, postmaster@state-farm-insurance-company-guide.com and postmaster@state-farm-life-insurance.com by e-mail.
Complainant and Respondent jointly requested a Stay of Administrative Proceeding on April 13, 2006, which was granted on April 17, 2006. The forty-five day Stay was granted on the fourth day of Respondent’s twenty-day response period. Accompanying the Stay was the requirement that one of the Parties must submit a request to continue Administrative Proceeding by May 30, 2006. Complainant filed a Request to Remove the Stay of Administrative Proceeding on May 24, 2006 and the Stay was lifted on May 25, 2006, after which Respondent had until June 12, 2006 to respond.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.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 <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names.
3. Respondent registered and used the <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, holds trademark registrations with
the United States Patent and Trademark Office (“USPTO”) for the STATE FARM
INSURANCE (Reg. No. 1,125,010 issued September 11, 1979) and STATE FARM (Reg.
No. 1,979,585 issued June 11, 1996) marks, which Complainant uses in connection
with its insurance and financial services business. Complainant operates a website at the <statefarm.com>
domain name, which offers insurance and financial goods and services.
Respondent registered the <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names on July 11, 2005 with GoDaddy.com. Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites, which feature links to third-party websites offering competing insurance and financial goods and services. Presumably, Respondent receives pay-per-click referral fees for redirecting Internet users to these third-party sites.
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 to the STATE FARM and STATE FARM INSURANCE marks through registration of the marks with the USPTO. 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 [or] have acquired secondary meaning.”); 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 <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names are confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks because they incorporate Complainant’s marks in their entirety, and add words which describe Complainant’s business and hyphens. The Panel finds that such minor additions do not negate the confusing similarity of the disputed domain names pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
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-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names. Complainant’s allegation is sufficient to make a prima facie case, which shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to respond may create the presumption that Respondent does not have rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will examine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c), in light of the available evidence.
Respondent is using the <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names to redirect Internet users to Respondent’s website featuring links to third-party websites offering competing goods and services, from which Respondent presumably receives pay-per-click referral fees. Respondent’s use of domain names which are confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks to redirect Internet users to Respondent’s website does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Moreover, there is no available evidence suggesting that Respondent is commonly known by the <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names, either as an individual or for business purposes. Complainant asserts that Respondent is not licensed to use the STATE FARM or STATE FARM INSURANCE marks, and is in no way affiliated with, or endorsed by, Complainant. Respondent’s WHOIS information identifies Respondent as “Octocat Ltd” which is in no way similar to Respondent’s <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names. The Panel finds that Respondent is not commonly known by the disputed domain names and has failed to establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <state-farm-auto-insurance-guide.com>,
<state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com>
domain names to redirect Internet users to Respondent’s website featuring links
to competing third-party websites. The
Panel finds that such use constitutes disruption of Complainant’s business and
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
the respondent registered and used the domain name <eebay.com> in bad
faith where the respondent has used the domain name to promote competing
auction sites).
Respondent’s <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names are confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks potentially confusing Internet users as to the existence of a relationship between Complainant and Respondent. Respondent is taking advantage of this confusion to redirect Internet users to its websites where Respondent presumably receives pay-per-click referral fees from links to competing third-party websites. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
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 relief should be GRANTED.
Accordingly, it is Ordered that the <state-farm-auto-insurance-guide.com>, <state-farm-insurance-company-guide.com> and <state-farm-life-insurance.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 28, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum