State Farm Mutual Automobile Insurance Company v. Clear Marketing Group, LLC
Claim Number: FA0610000817175
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 Clear Marketing Group, LLC (“Respondent”), P. O. Box 1132, Highland Park, IL 60035.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wild-state-farm-insurance.net>, registered with Moniker Online Services, 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 October 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 11, 2006.
On October 11, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wild-state-farm-insurance.net> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 October 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 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@wild-state-farm-insurance.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wild-state-farm-insurance.net> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <wild-state-farm-insurance.net> domain name.
3. Respondent registered and used the <wild-state-farm-insurance.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is national insurance company that was founded in 1930. In connection with the provision of its insurance services, Complainant holds a service mark registration for the STATE FARM INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,125,010 issued September 11, 1979).
Respondent registered the <wild-state-farm-insurance.net> domain name on June 26, 2006. The disputed domain name resolves to a website entitled “The Bare Truth About My Butt Quiz.” The resulting website contains an article written by Timothy Ward that is surrounded by a number of sponsored text links to third-party websites, including direct competitors of Complainant in the insurance industry.
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
INSURANCE mark through registration of the mark 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.”).
Complainant contends that the disputed domain name is confusingly similar to its STATE FARM INSURANCE mark. The disputed domain name contains Complainant’s mark in its entirety, adds the term “wild” and replaces any spaces between terms with hyphens. The Panel finds that neither the addition of a term such as “wild” nor the use of hyphens to separate terms effectively differentiates the disputed domain name from the otherwise unmodified mark contained therein. Accordingly, the Panel finds the <wild-state-farm-insurance.net> domain name to be confusingly similar to Complainant’s STATE FARM INSURANCE mark. See Tetris Holding, LLC v. ID Prof BV, FA 732840 (Nat. Arb. Forum Aug. 2, 2006) (finding the <crazytetris.com> domain name to be confusingly similar to the complainant’s TETRIS mark because it merely added a generic term to the otherwise unmodified mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. If Complainant successfully establishes a prima facie case, the Panel will shift the burden to Respondent to come forward with evidence that shows that it does have 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 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 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).”).
Respondent’s failure to submit a Response in this proceeding raises a presumption that it lacks rights and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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.”). However, the Panel shall evaluate the record to determine if Respondent nevertheless has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The disputed domain name resolves to a website entitled “The Bare Truth About My Butt Quiz.” The resulting website contains an article written by Timothy Ward regarding his experience in failing an online quiz entitled “The Butt Quiz.” The article is surrounded by a number of sponsored, textual links to third-party websites, including direct competitors of Complainant in the insurance industry. The fact that the resulting website contains an article that is unrelated to Complainant’s business does not invoke rights or legitimate interests on Respondent’s behalf in relation to the disputed domain name. Alternatively, Respondent’s use of the confusingly similar domain name to resolve to a website that contains sponsored text links to the direct competitors of Complainant does not amounts to 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). See Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of Complainant’s direct competitors); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, according to the WHOIS database, Respondent registered the disputed domain name under the name, “Clear Marketing Group, LLC” Due to the fact that there is no other evidence in the record to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name or any reasonable variation thereof. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has registered and used
the disputed domain name in bad faith.
The fact that Respondent used the disputed domain name to resolve to a
website that contained an article unrelated to Complainant’s business does not
overcome the fact that the resulting website also contains sponsored, textual
links that direct Internet users to Complainant’s direct competitors. The Panel derives from the nature of the
sponsored text links that Respondent is receiving commercial gain from
click-through fees. Additionally, due
to the confusingly similar nature of the disputed domain name and the resulting
content that prominently displays textual, insurance-related advertisements, there
exists likelihood that consumers will become confused as to Complainant’s
affiliation with or sponsorship of the resulting website. Accordingly, the Panel finds Respondent to
have registered and used the disputed domain name in bad faith pursuant to Policy
¶ 4(b)(iv). See Philip Morris Inc.
v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s
registration of an infringing domain name to redirect Internet users to banner
advertisements constituted bad faith use of the domain name); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where the respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant).
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 <wild-state-farm-insurance.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: November 27, 2006
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