State Farm Mutual Automobile Insurance Company v. Ed Heiberger
Claim Number: FA0607000746764
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 Ed Heiberger (“Respondent”), 3180 Expressway Drive S, Islandia, NY 11749.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 10, 2006.
On July 10, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.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 July 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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@statefarmforeclosures.com, postmaster@statefarmproperty.com, postmaster@statefarmproperties.com, postmaster@statefarmrealestate.com, and postmaster@statefarmrealty.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names.
3. Respondent registered and used the <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company,
has been using the STATE FARM mark in connection with its offering of insurance
and financial services since 1930.
Complainant holds a trademark registration for the STATE FARM mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585
issued June 11, 1996). Complainant also
holds the domain name registration for the <statefarm.com> domain name,
which Complainant utilizes to operate a website providing information regarding
its insurance and financial services.
Respondent, Ed Heiberger, registered the <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names on October 24, 2005. Respondent’s disputed domain names each resolve to search engine websites featuring links to third-party websites offering various products and services.
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.
The Panel finds that Complainant has established rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i) through Complainant’s federal trademark registrations for the mark with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Furthermore, the Panel finds that Respondent’s <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names are confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). The disputed domain names each consist of Complainant’s registered mark with the addition of a common term that describes the products, services, or information offered by Complainant, as well as the generic top-level domain (“gTLD”) “.com.” Thus, consistent with the holdings of prior panels, the Panel in the instant case finds that the addition of a descriptive term to a mark does not avoid the creation of confusing similarity between the domain name and the mark for purposes of Policy ¶ 4(a)(i). Moreover, the Panel does not find that the addition of a gTLD creates a sufficient distinction between a domain name and a mark. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names are confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL 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.
Per Policy ¶ 4(a)(ii), Complainant initially must establish that Respondent does not have rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to demonstrate that it has rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(a)(ii). 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has established a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain names pursuant to Policy ¶ 4(c).
Respondent’s <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names each resolve to a search engine website featuring links to third-party websites offering products and services unrelated to Complainant. Therefore, in light of such use by Respondent, the Panel finds that Respondent has not demonstrated either 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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)).
The Panel finds that the evidence fails to indicate that Respondent is commonly known by the <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names under Policy ¶ 4(c)(ii). Respondent’s WHOIS information identifies Respondent as “Ed Heiberger.” Furthermore, Complainant asserts that Respondent is not associated with, affiliated with, or sponsored by Complainant. Complainant also contends that it did not authorize Respondent to register the disputed domain names or to use Complainant’s STATE FARM mark for Respondent’s business purposes. Therefore, based upon the evidence on record, the Panel finds that Respondent is not commonly known by the <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to search engine websites providing links to third-party websites offering various products and services. Consequently, the Panel finds that Respondent registered and used the disputed domain names with the intent to divert Internet users to its websites by taking advantage of the goodwill inherent in Complainant’s registered STATE FARM mark. Therefore, the Panel concludes that Respondent registered and used the <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Moreover, in light of Respondent’s diversionary use of the disputed domain names to provide links to third-party websites, the Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <statefarmforeclosures.com>, <statefarmproperty.com>, <statefarmproperties.com>, <statefarmrealestate.com>, and <statefarmrealty.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 23, 2006
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