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DECISION

 

State Farm Mutual Automobile Insurance Company v. Jordan Levinson d/b/a N.A.

Claim Number: FA0703000933913

 

PARTIES

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 Jordan Levinson d/b/a N.A. (“Respondent”), 6820 Lyons Technology Cir, Coconut Creek 33073, US.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarminsurrance.com>, registered with Active Insider, Inc.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 7, 2007.

 

On March 8, 2007, Active Insider, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarminsurrance.com> domain name is registered with Active Insider, Inc. and that Respondent is the current registrant of the name.  Active Insider, Inc. has verified that Respondent is bound by the Active Insider, 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 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 4, 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@statefarminsurrance.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 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <statefarminsurrance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <statefarminsurrance.com> domain name.

 

3.      Respondent registered and used the <statefarminsurrance.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, is a nationally well-known company in the insurance and financial industry.  Complainant has established a recognized presence on television and other media.  In connection with its financial and insurance products and services, Complainant has registered numerous marks with the United States Patent and Trademark Office (“USPTO”), including STATE FARM (Reg. No. 1,979,585 issued June 11, 1996) and STATE FARM INSURANCE (Reg. No. 1,125,010 issued September 11, 1979).

 

Respondent registered the <statefarminsurrance.com> domain name on November 17, 2006.  Respondent is using the disputed domain name to display a directory of links for various third-party products and services, including insurance products and services in direct competition with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark 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 <statefarminsurrance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark because the domain name fully incorporates Complainant’s mark, merely omits the spaces between the words, adds an extra “r” to misspell “insurance,” and adds the generic top-level domain “.com.”  The removal of spaces and the addition of a generic top-level domain are entirely functional and therefore irrelevant to Policy ¶ 4(a)(i) analysis.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).  The Panel finds that a minor misspelling of Complainant’s mark by Respondent does not sufficiently distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, 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).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).      

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <statefarminsurrance.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent is using the <statefarminsurrance.com> domain name, which is confusingly similar to Complainant’s STATE FARM INSURANCE mark, to divert Internet users to a website, which contains links to websites that sell insurance services that compete with Complainant.  Such use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

Complainant asserts that Respondent is not authorized to use Complainant’s STATE FARM INSURANCE mark and that Respondent is not associated with, affiliated with, or sponsored by Complainant in any way.  Furthermore, Respondent’s WHOIS information, as well as other information in the record, does not suggest that Respondent is commonly known by the <statefarminsurrance.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).   

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).      

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name, which is confusingly similar to Complainant’s STATE FARM INSURANCE mark, to operate a commercial website containing links to various third-party products and services, including insurance products and services in direct competition with Complainant.  Because it appears that Respondent has registered and is using the <statefarminsurrance.com> domain name for the primary purpose of disrupting Complainant’s business, the Panel finds such use indicates bad faith according 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)).

 

Respondent is using the <statefarminsurrance.com> domain name, which is confusingly similar to Complainant’s mark, to divert Internet users seeking Complainant’s insurance and financial-related products and services to a website containing links to competing products and services.  The Panel infers that Respondent earns click-through fees for diverting Internet users to third-party websites.  Therefore, Respondent is profiting from the confusing similarity between Respondent’s domain name and Complainant’s mark, and taking advantage of the goodwill associated with the mark.  Use of the disputed domain name for this purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant.  Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).    

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <statefarminsurrance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  April 11, 2007

 

 

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