State Farm Insurance Company v. Yang Weiming
Claim Number: FA0609000787979
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 Yang Weiming (“Respondent”), Wuhan university, District 2, P.O.BOX,B-1, Wuhan 430072 China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsurancedirect.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2006.
On September 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancedirect.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 September 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 28, 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@statefarminsurancedirect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <statefarminsurancedirect.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <statefarminsurancedirect.com> domain name.
3. Respondent registered and used the <statefarminsurancedirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Insurance Company, is a nationally leading provider of insurance and financial services in the United States. In connection with the provision of these services, Complainant has registered a number of trade and service marks including the STATE FARM INSURANCE mark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,125,010 issued September 11, 1979).
Respondent registered the <statefarminsurancedirect.com> domain name March 24, 2006. Respondent’s disputed domain name resolves to a website featuring links to various competing and non-competing commercial websites.
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 asserts rights in the STATE FARM INSURANCE mark through registration with the USPTO. The Panel finds that Complainant’s extensive use of the STATE FARM INSURANCE mark for over thirty years is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See 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.”); see also 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.”).
Complainant contends that Respondent’s <statefarminsurancedirect.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire STATE FARM INSURANCE mark and adds the generic term “direct.” The Panel finds that the addition of a generic term to an otherwise identical mark fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to the complainant’s registered mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <statefarminsurancedirect.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no 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 this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends that Respondent is using its disputed
domain name to resolve to a website that features links to various competing
and non-competing commercial websites from which Respondent presumably receives
referral fees. The Panel finds that
Respondent’s use is 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 ¶ (c)(iii). See
Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat.
Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is
blank but for links to other websites, is not a legitimate use of the domain
names); see also 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).
Moreover, Complainant contends that Respondent is neither
commonly known by the <statefarminsurancedirect.com>
domain name nor authorized to register domain names featuring Complainant’s
STATE FARM INSURANCE mark in any way.
In the absence of evidence suggesting otherwise, the Panel finds that
Respondent has not established rights or legitimate interests in accordance
with Policy ¶ 4(c)(ii). See 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 Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the domain
name precede the respondent’s registration; (3) the respondent is not commonly
known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <statefarminsurancedirect.com> domain name to operate websites that provide Internet users with links to various competing insurance and financial services websites. The Panel finds that Respondent’s use constitutes a disruption of Complainant’s business and evinces bad faith pursuant to Policy ¶ 4(b)(iii). See 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)); 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).
Furthermore, Respondent’s use will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites. The Panel finds that such use of a domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
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 <statefarminsurancedirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 18, 2006
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