State Farm Mutual Automobile Insurance Company v. DmCommunications Co, Ltd.
Claim Number: FA0609000792100
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 DmCommunications Co, Ltd. (“Respondent”), Wondang-dong Seo-gu 301, Incheon 404-320, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarminsurancecos.info>, registered with Gal Communications Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 11, 2006; the National Arbitration Forum received a hard copy of the Complaint September 12, 2006.
On September 18, 2006, Gal Communications Ltd. confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancecos.info> domain name is registered with Gal Communications Ltd. and that Respondent is the current registrant of the name. Gal Communications Ltd. verified that Respondent is bound by the Gal Communications Ltd. registration agreement and thereby has 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 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 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@statefarminsurancecos.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <statefarminsurancecos.info>, is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE mark.
2. Respondent has no rights to or legitimate interests in the <statefarminsurancecos.info> domain name.
3. Respondent registered and used the <statefarminsurancecos.info> domain name 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 registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM (Reg. No 1,125,010 issued September 11, 1979) and STATE FARM INSURANCE (Reg. No. 1,979,585 issued June 11, 1996). Complainant uses these marks in connection with its operations in both the financial services and insurance businesses.
Respondent registered the <statefarminsurancecos.info>
domain name April 6, 2006.
Respondent is using the disputed domain name to redirect Internet users
to Respondent’s website which features links to third-party websites. Many of the linked websites appear to offer
goods and services in direct competition with Complainant, for example “Auto
Insurance” and “Cheap Auto Insurance.”
Other linked websites are unrelated to Complainant, including “Homes for
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 will draw such inferences as the Panel 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 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 Complainant to 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 established using extrinsic proof in this
proceeding that it has 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 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.”).
The disputed domain name that Respondent registered, <statefarminsurancecos.info>, is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks. The disputed domain name contains Complainant’s marks in its 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.” In the disputed domain name, Respondent merely adds the letters “cos” to Complainant’s marks, which does not distinguish the disputed domain name from Complainant’s marks. As the panel in Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), found, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks. Thus, the Panel finds that the disputed domain is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in marks contained in their entirety within the disputed domain
name. Complainant asserts that
Respondent lacks such rights to or legitimate interests in the disputed domain
name. This satisfies Complainant’s
requirement to make 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 evaluates 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 the linked websites
appear to offer goods and services that compete with Complainant, while others
are unrelated to Complainant’s business.
Presumably, Respondent receives pay-per-click referral fees from the
search engine and links. In both Trans Global
Thus, the Panel finds that
Respondent’s use of the disputed domain name is not a bona fide offering
of goods or services as contemplated by Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use as contemplated by Policy
¶ 4(c)(iii).
Further, no available evidence suggests that Respondent is
commonly known by the <statefarminsurancecos.info> domain
name. Respondent’s WHOIS information
identifies Respondent as “DMCommunications Co., Ltd.,” a name with no apparent
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 Complainant satisfied Policy ¶ 4(a)(ii).
Complainant further asserts that Respondent registered and used the disputed domain name in bad faith. The disputed domain name that Respondent registered, <statefarminsurancecos.info>, is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks. Internet users seeking Complainant’s genuine website 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. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that the respondent’s use of the disputed domain name to host links to the complainant’s competitors, links from which the respondent presumably received pay-per-click fees, was evidence of bad faith pursuant to Policy ¶ 4(b)(iv). Similarly, in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found 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 complainant’s services and merely took advantage of Internet user’s mistakes. Thus, the Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Respondent is attracting Internet users seeking Complainant to Respondent’s website because the <statefarminsurancecos.info> domain name is confusingly similar to Complainant’s marks. These Internet users seeking Complainant’s insurance services may instead use the services of a competitor of Complainant 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 in Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), stated: “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).” The panel in Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), applied similar reasoning, finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Thus, the Panel finds that such use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminsurancecos.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 27, 2006.
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