State Farm Mutual Automobile Insurance Company v. Louise Dunn d/b/a Eatdirt Designs
Claim Number: FA0608000766463
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 Louise Dunn d/b/a Eatdirt Designs (“Respondent”), 16 Beverley Gardens, Maidenhead, BE SL6 6SN GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <state-farm-insurance-101.info>, registered with eNom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2006.
On August 1, 2006, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <state-farm-insurance-101.info> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 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-insurance-101.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <state-farm-insurance-101.info> domain name is 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-insurance-101.info> domain name.
3. Respondent registered and used the <state-farm-insurance-101.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, holds registrations with the United States Patent and Trademark Office for the STATE FARM (Reg. No. 1,979,585 issued June 11, 1996) and STATE FARM INSURANCE (Reg. No. 1,125,010 issued September 11, 1979) marks. Complainant uses the STATE FARM and STATE FARM INSURANCE marks in connections with providing insurance and financial goods and services. Complainant registered the <statefarm.com> domain name to operate its website, which provides Internet users with access to Complainant’s insurance and financial goods and services online.
Respondent registered the disputed domain name on October 24, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which hosts a generic Internet search engine and numerous links to third-party websites. Many of the third-party websites appear to offer insurance goods and services in direct competition with Complainant, for example “auto insurance quotes” and “auto insurance directory.”
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 and
STATE FARM INSURANCE marks through registration with the USPTO. Complainant’s rights in the marks
established through registrations of those marks pre-date Respondent’s
registration of the disputed domain name by many years. The Panel finds that Complainant has
established rights in the mark pursuant to Policy ¶ 4(a)(i). See 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."); see also 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.”).
Respondent’s <state-farm-insurance-101.info> domain name is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks. The disputed domain name contains Complainant’s marks in their entirety. In Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the panel found that “the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” The disputed domain name also inserts hyphens between the terms of the domain name. In Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), the panel found that (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” Respondent further added the number “101” and the top-level domain “.info” to Complainant’s mark. The panel in Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000), found that the addition of the numbers “502” and “520” to the complainant’s mark did not create a distinct domain name and the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), held that the addition of a top-level domain does not create a distinct domain name. Thus, the Panel finds that the addition of hyphens, or generic terms or a top-level domain does not overcome the confusing similarity between the disputed domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name constitutes a prima facie case for the purpose of the Policy. The creation of a prima facie case shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent had the opportunity to put forward to the Panel evidence or arguments demonstrating its rights or legitimate interests in the form of a Response, but Respondent did not avail itself of this opportunity. In G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), the panel stated that, “because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).” Similarly, in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel found that the complainant’s assertion that the respondent lacks rights or legitimate interests shifts the burden to the respondent because the evidence or arguments relevant to demonstrating that the respondent does have rights or legitimate interests are “uniquely within the knowledge and control of the respondent.” The panel in Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002), addressed the respondent’s failure to respond saying, “Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.” Thus, the Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c), keeping in mind the allowable adverse inferences from Respondent’s failure to submit a response.
Respondent is using the disputed domain name to redirect
Internet users to Respondent’s website featuring a generic Internet search
engine and links to third-party websites, some of which compete with
Complainant. Presumably, Respondent
receives pay-per-click referral fees from the search engine and links. In both Trans
Global Tours, LLC v. Yong Li, FA 196166
(Nat. Arb. Forum Nov. 1, 2003) and Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0,
FA 128701 (Nat. Arb. Forum Dec. 16, 2002), the panels found that the use of a
confusingly similar domain name to divert Internet users to a generic Internet
search engine was neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). The
panel in 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003), held that using a
confusingly similar domain name to operate a website hosting links to the
complainant’s competitors could not be considered a bona fide offering
of goods or services or a legitimate noncommercial or fair use. The panel in Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003), came to a similar conclusion, finding no
rights and legitimate interest where the respondent used the disputed domain
name to redirect Internet users to a website including links to the
complainant’s competitors, and presumably received financial compensation when
misdirected Internet users followed links.
Thus, the Panel finds that Respondent’s use of the disputed domain name
is neither a bona fide offering of goods or services as contemplated by
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by
Policy ¶ 4(c)(iii).
There is no available evidence that Respondent is commonly
known by the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Louise Dunn,” a
name bearing no relationship to the disputed domain name. Further, Complainant asserts that Respondent
is not sponsored by or affiliated with Complainant and does not have permission
from Complainant to reflect Complainant’s marks in a domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name and thus, lacks rights or legitimate
interests as contemplated by 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <state-farm-insurance.101.info> domain name is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks. Internet users seeking Complainant’s genuine website, located at the <statefarm.com> domain name may instead find themselves redirected to Respondent’s website. Because of the confusing similarity between the disputed domain name and Complainant’s mark, Internet users may mistakenly believe that Respondent’s website is sponsored by or affiliated with Complainant. Respondent is profiting from this confusion by populating its website with links to third-party websites, some of which compete with Complainant, which presumably generate referral fees for Respondent. 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 AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent is attracting Internet users to its website
because the <state-farm-insurance.101.info> domain name is
confusingly similar to Complainant’s mark.
Internet users seeking Complainant’s insurance services may instead use
the services of a competitor after following the links to third-party websites
on Respondent’s website. In this way,
Respondent is diverting business away from Complainant and disrupting
Complainant’s business. The Panel finds
that such use 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 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 <state-farm-insurance-101.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 8, 2006
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