State Farm Mutual Automobile Insurance Company v. MetaWorkz, LLC c/o Jeff Sartin
Claim Number: FA0703000930712
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Automobile Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmautoquote.com>, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 5, 2007.
On March 2, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoquote.com> 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 March 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 2007 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@statefarmautoquote.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM and STATE FARM INSURANCE marks (i.e. Reg. No. 1,979,585, issued June 11, 1996 for the STATE FARM mark and Reg. No. 1,125,010, issued September 11, 1979 for the STATE FARM INSURANCE mark).
Complainant has used the STATE FARM and STATE FARM INSURANCE marks for the international sale of financial and insurance services since 1930.
Complainant specifically uses its marks for the sale of automobile insurance.
Complainant has registered the domain name <statefarm.com>, which it uses in connection with the sale and distribution of information about its financial and insurance goods and services.
Respondent registered the <statefarmautoquote.com> domain name on or about September 6, 2006.
Respondent’s website directs users to a web page indicating that the website was removed, changed, or is temporarily unavailable.
Respondent’s <statefarmautoquote.com> domain name is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks.
Respondent does not have any rights or legitimate interests in the domain name <statefarmautoquote.com>.
Respondent has registered and uses the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 of the marks with the USPTO. 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <statefarmautoquote.com> domain name is confusingly similar to Complainant’s STATE FARM mark because Respondent’s domain name uses Complainant’s mark in its entirety and merely adds the descriptive terms “auto” and “quote” to the mark. Moreover, the terms Respondent adds to Complainant’s mark describe Complainant’s insurance business. The addition of these descriptive terms to Complainant’s mark does not negate the confusingly similar character of Respondent’s domain name under Policy ¶ 4(a)(i). See, for example, Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” so thsts Policy ¶ 4(a)(i) is satisfied); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar to a competing mark because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with a complainant’s business).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant alleges that Respondent does not have rights or legitimate interest in the <statefarmautoquote.com> domain name. Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 domain name under Policy ¶ 4(a)(ii).” To the same effect, see Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Because Respondent has failed to respond to the Complaint
herein, we are entitled to conclude that Respondent does not have rights or
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); 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.” Nonetheless,
the Panel will evaluate the available evidence to determine whether there is
any basis for concluding that Respondent has rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c).
In this connection, we first note that Respondent offers no evidence, and that no evidence exists in the record, to indicate that Respondent has made any use of the website beyond registering the domain name in September of 2006, as alleged. In America Online, Inc. v. Kloszewski, a panel found that a respondent had no rights to or legitimate interests in a disputed domain name where that respondent failed to use the website for over six months. FA 204148 (Nat. Arb. Forum Dec. 4, 2003). Similarly, we conclude that Respondent’s failure to use the disputed domain name for any purpose from the time of its registration to date fails to establish a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that where a respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where a respondent made no use of infringing domain names); further see Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000): “Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”
Finally, the record also does not indicate, nor has Respondent offered any evidence to indicate, that it is commonly known by the <statefarmautoquote.com> domain name. Respondent’s WHOIS information identifies Respondent as “MetaWorkz LLC” and “Jeff Sartin.” Therefore, Respondent has failed to establish rights or legitimate interests in the <statefarmautoquote.com> domain name for purposes of Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person other than a complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>); see also 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 a factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel thus finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered the <statefarmautoquote.com> domain name, but the evidence of record indicates that it has failed to use the domain since it was registered. A panel held in CBS Broadcasting, Inc. v. LA-Twilight-Zone that, given a complainant’s extended use of a mark and the fame of its mark, a respondent’s failure to make use of a competing domain name constituted bad faith. D2000-0397 (WIPO June 19, 2000). Here there is no dispute that Complainant has used the STATE FARM mark in connection with its insurance business since 1930. Respondent’s lack of active use of the contested domain name incorporating Complainant’s mark therefore constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make use of a domain name satisfies the requirements of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); further see E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) a respondent knew or should have known of a complainant’s famous GALLO marks and (2) that respondent made no active use of the domain name <winegallo.com>).
Additionally, Respondent might in the future use the <statefarmautoquote.com> domain name to redirect Internet users to Respondent’s website for profit. A panel has held that there is no reason to wait for a respondent to make use of a website when such use will create the confusion Policy ¶ 4(b)(iv) attempts to prohibit. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though a respondent has not used a domain name because “[i]t makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Therefore, because Respondent’s domain name is confusingly similar to Complainant’s STATE FARM mark, Internet users may become confused as to Complainant’s possible affiliation with the website if Respondent begins using the domain name. We therefore conclude that Respondent’s anticipated eventual use of the domain name <statefarmautoquote.com> constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Alitalia–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where a respondent made no active use of a domain name and there was no other indication that that respondent could have registered and used the domain name for any non-infringing purpose); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with Complainant”).
Finally under this head, it appears that Respondent
registered the domain name <statefarmautoquote.com>
with at least constructive knowledge of Complainant’s rights in the STATE
FARM trademark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also
For all of these reasons, the Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarmautoquote.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 16, 2007
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