State Farm Mutual Automobile Insurance Company v. Bryan Cruz
Claim Number: FA0608000766658
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 Bryan Cruz (“Respondent”), 6354 Tupelo Dr, Citrus Heights, CA 95621.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <statefarmcomp.com> and <statefarmworkcomp.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.
James A. Crary 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, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmcomp.com> and <statefarmworkcomp.com> domain names are 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 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 postmaster@statefarmcomp.com and postmaster@statefarmworkcomp.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 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <statefarmcomp.com> and <statefarmworkcomp.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmcomp.com> and <statefarmworkcomp.com> domain names.
3. Respondent registered and used the <statefarmcomp.com> and <statefarmworkcomp.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a leader in the insurance and financial services industry. Complainant holds a registration with the United States Patent and Trademark Office for the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996). Complainant utilizes the State Farm mark in connection with offering its insurance and financial services to the public. Complainant has registered the <statefarm.com> domain name in order to run its website, which promotes Complainant’s insurance and financial services to Internet users.
Respondent registered the disputed domain names on November 29, 2005. Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites, which features links to third-party websites. Many of the links are to the commercial websites of Complainant’s direct competitors, for example “Compare Auto Insurance” and “Free Insurance Quotes.” Other links are to unrelated websites, for example “Summer Camps” and “Live-In Summer Childcare.” Respondent’s websites also contain sponsored banner advertisements.
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 through registration 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 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 <statefarmcomp.com>
and <statefarmworkcomp.com> domain names are confusingly
similar to Complainant’s STATE FARM mark.
Both of the disputed domain names contain Complainant’s STATE FARM mark
in its entirety, and add the terms “comp” or “workcomp.” The terms “comp” and “workcomp” may refer to
“compensation” and “workers compensation,” thus describing a portion of
Complainant’s insurance business. The
Panel finds that the addition of terms descriptive of Complainant’s business to
Complainant’s mark does not create distinct domain names and does not overcome
the confusing similarity between the disputed domain names and Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he 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.”); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant’s assertion constitutes a prima facie case for purposes of the Policy, and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent is provided with the opportunity to submit a Response in order to provide the Panel with evidence of arguments that demonstrate Respondent’s rights or legitimate interests in the disputed domain names. Respondent’s failure to provide a Response suggests to the Panel that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“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.”). The Panel will examine the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).
Respondent is using the disputed domain names to redirect
Internet users to Respondent’s websites which features links to third-party
websites and sponsored advertisements.
Many of the links to third-party websites are to websites offering
insurance or financial services in direct competition with Complainant. Presumably, Respondent receives
pay-per-click referral fees from the links and advertisements on its
websites. The Panel finds that such use
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). See TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of
goods or services); see also Wells Fargo & Co.
v. Lin Shun Shing, FA 205699 (Nat. Arb.
Forum Dec. 8, 2003) (finding that using a domain name to direct Internet
traffic to a website featuring pop-up advertisements and links to various
third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user).
There is no available evidence to indicate that Respondent
is commonly known by the disputed domain names. Respondent’s WHOIS information identifies Respondent as “Bryan
Cruz,” a name unrelated to the disputed domain names. Further, Complainant asserts that Respondent is not affiliated
with Complainant in any way and does not have permission from Complainant to
use Complainant’s mark in a domain name.
Thus, the Panel finds that Respondent is not commonly known by the disputed
domain names and lacks rights or legitimate interests 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 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 <statefarmcomp.com> and <statefarmworkcomp.com>
domain names are confusingly similar to Complainant’s STATE FARM mark. Internet users seeking Complainant’s genuine
website at <statefarm.com> may accidentally find themselves redirected
instead to Respondent’s websites through their Internet search engine or web
browser. Once redirected to
Respondent’s websites, Internet users may mistakenly believe that Respondent’s
websites are somehow affiliated with Complainant. Respondent is profiting from this confusion, presumably receiving
pay-per-click referral fees from links to third-party websites and
advertisements. The Panel finds that
such use is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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.”); see also 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.’”).
Respondent is using the disputed domain names to attract
Internet users to its websites, which feature links to commercial third-party
websites, some of which offer insurance and financial services in direct
competition with Complainant. Internet
users may find themselves redirected to Respondent’s website when there intent
is to visit Complainant’s genuine website.
Redirected Internet users may follow the links on Respondent’s website
to websites in competition with Complainant and may do business with those
competitors instead of with Complainant, thus 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 <statefarmcomp.com> and <statefarmworkcomp.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 11, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum