State Farm Mutual Automobile Insurance Company v. Domain Investments LLC c/o Jordan Levinson
Claim Number: FA0703000933954
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 Domain Investments LLC c/o Jordan
Levinson (“Respondent”), 6829 Lyons Technology Cir,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmersinsurance.com>, registered with eNom.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge 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 March 7, 2007; the National Arbitration Forum received a hard copy of the Complaint March 16, 2007.
On March 8, 2007, eNom confirmed by e-mail to the National Arbitration Forum that the <statefarmersinsurance.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom verified that Respondent is bound by the eNom 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 March 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 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@statefarmersinsurance.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 14, 2007, 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, <statefarmersinsurance.com>, is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent has no rights to or legitimate interests in the <statefarmersinsurance.com> domain name.
3. Respondent registered and used the <statefarmersinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company,
is a well-known financial and insurance services provider in the
Complainant has registered 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 <statefarmersinsurance.com> domain name November 17, 2006. Respondent’s website at the disputed domain name contains links with competing financial and insurance companies.
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 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 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.
Through registration of the STATE FARM INSURANCE mark with the USPTO in 1979, many years before Respondent registered the <statefarmersinsurance.com> domain name in late 2006, Complainant established prior rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainants federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
The disputed domain name that Respondent registered, <statefarmersinsurance.com>, incorporates Complainant’s registered STATE FARM INSURANCE mark in its entirety and merely adds the suffix “ers” to the end of the term “farm.” This is not a distinguishing difference. As a result, the Panel finds that the contested domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this
proceeding that Complainant has rights to and legitimate interests in the mark
contained in its entirety within the disputed domain name. Complainant alleges that Respondent lacks
such rights and legitimate interests in the <statefarmersinsurance.com> domain name. Complainant must first make a prima facie case
in support of its allegations and then the burden shifts to Respondent to show
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC
v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”); see
also Swedish Match UK Ltd. v. Admin,
Domain, FA 873137
(Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by the complainant under Policy ¶ 4(c), the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <statefarmersinsurance.com>
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 Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
However, the Panel examines the record to
determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent registered the <statefarmersinsurance.com> domain name under the name “Domain Investments LLC c/o Jordan Levinson,”
and no other evidence in the record suggests that Respondent is commonly known
by the <statefarmersinsurance.com>
domain name. Thus, Respondent has not established
rights or legitimate interests in the <statefarmersinsurance.com>
domain name pursuant to Policy ¶ 4(c)(ii). See The Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb.
Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar domain name currently resolves to a website with links to Complainant’s competitors in the insurance and financial services industries. In Hale Products, Inc. v. Hart International Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that the respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because the respondent was diverting Internet users to the website of one of the complainant’s competitors. Because Respondent is also diverting Internet users seeking Complainant’s services to the websites of Complainant’s competitors and because Respondent is more likely than not receiving click-through fees in the process, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that
Respondent acted in bad faith in registering and using the disputed <statefarmersinsurance.com> domain name to redirect Internet users to a website with
links to Complainant’s direct competitors in the insurance and financial services
industries, potentially disrupting Complainant’s business. In
EBAY, Inc. v. MEOdesigns,
D2000-1368 (WIPO Dec. 15, 2000), the panel concluded that the respondent had
registered and used the <eebay.com> domain name in bad faith by using it
to promote auction sites competing with the complainant. Similarly, Respondent’s use of the disputed
domain name to feature competing companies indicates that Respondent has
registered and used the <statefarmersinsurance.com>
domain name in order to disrupt Complainant’s business in bad faith according
to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb.
Forum Sept. 21, 2006) (finding that the respondent registered and used the
disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate websites that compete with Complainant’s
business).
By using the <statefarmersinsurance.com> domain name to divert Internet users to competing websites,
Respondent also has attempted to attract, for commercial gain, consumers
seeking information on Complainant to its own website. In Identigene,
Inc. v. Genetest Laboratories., D2000-1100 (WIPO Nov. 30, 2000), the panel
found that the respondent’s use of the <identagene.com> domain name,
which was confusingly similar to the complainant’s IDENTIGENE mark, to operate
a website offering Internet users similar services as the complainant
constituted bad faith registration and use because it was likely to cause
consumer confusion as to the source or sponsorship of the services offered at
the domain name. Likewise, Respondent is taking advantage of consumer confusion as to the
source, affiliation, sponsorship or endorsement of the disputed domain name and
likely profiting from the goodwill associated with the STATE FARM INSURANCE
mark in the form of click-through fees.
The Panel finds Respondent’s registration and use of the <statefarmersinsurance.com> domain name to be in bad faith according to
Policy ¶ 4(b)(iv).
See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting from click-through fees).
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 <statefarmersinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 30, 2007.
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