State Farm Mutual Automobile Insurance Company v.
Claim Number: FA0704000960208
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <askstatefarm.com> and <justaskstatefarm.com>, registered with Go Daddy Software, 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 April 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2007.
On April 13, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <askstatefarm.com> and <justaskstatefarm.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 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@askstatefarm.com and postmaster@justaskstatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a well-recognized provider of insurance and financial services.
In connection with the provision of these services, Complainant has registered several trademarks and service marks with the United States Patent and Trademark Office (“USPTO”), including the trademark STATE FARM (Reg. No. 1,979,585, issued June 11, 1996).
Respondent registered the <askstatefarm.com> and <justaskstatefarm.com> domain names on September 18, 2006.
The disputed domain names resolve to websites that offer links to third-party commercial sites, some of which are in direct competition with the business of Complainant.
Respondent’s <askstatefarm.com> and <justaskstatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights or legitimate interests in the <askstatefarm.com> and <justaskstatefarm.com> domain names.
Respondent registered and uses the <askstatefarm.com> and <justaskstatefarm.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are 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 mark through its registration 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat.
Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination
that a mark is registrable, by so issuing a registration, as indeed was the
case here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Respondent’s <askstatefarm.com> and <justaskstatefarm.com>
domain names are confusingly similar to Complainant’s STATE FARM mark inasmuch as
the domain names merely pair generic terms and the “.com” top-level domain with
Complainant’s STATE FARM mark. Such
minor additions to Complainant’s STATE FARM mark are not sufficiently distinct,
and thus render the domain names confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
The Panel thus concludes Complainant has satisfied Policy ¶
4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant bears the initial burden of showing Respondent’s lack of rights or legitimate interests in the disputed domain names. Once Complainant has made out a prima facie showing, the burden shifts to Respondent to demonstrate rights or legitimate interests in the disputed domain names in accord with Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also 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”). Finding that Complainant has made the requisite initial showing, we now consider whether there is any evidence in the record before us to demonstrate that Respondent holds rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
In this connection, the record fails to demonstrate Respondent employs the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, it is undisputed that the domain names resolve to websites providing a list of links to third parties, some of which are Complainant’s competitors. Such use by Respondent does not comport with Policy ¶ 4(c)(i) or (iii) in establishing a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which referred to that complainant’s competitors, was not a bona fide offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because a respondent's sole purpose in selecting the domain names there in issue was to cause confusion with a complainant's website and marks, its use of those domain names was not in connection with a bona fide offering of goods or services or any fair use)
Respondent has offered no evidence, and no evidence appears in the record to indicate, Respondent is commonly known by Complainant’s STATE FARM mark or is in some way associated with, affiliated with, or sponsored by Complainant. Moreover, Respondent’s WHOIS information does not support a finding that Respondent is commonly known by the <askstatefarm.com> or <justaskstatefarm.com> domain names. Pursuant to Policy ¶ 4(c)(ii), we conclude that Respondent is not commonly known by either of the disputed domain names. See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply to the case there considered).
The Panel therefore concludes Complainant has satisfied Policy ¶ 4(a)(ii).
Under this head, we conclude, on the basis of the uncontroverted evidence of record, that Respondent’s use of domain names confusingly similar to Complainant’s STATE FARM mark to link Internet users to third-party products and services, including products and services that compete with the business of Complainant, was an intentional diversion by Respondent in order to earn click-through fees. Such use of Complainant’s mark for commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.”); see also 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.”).
In addition, it appears that Respondent registered the <askstatefarm.com> and <justaskstatefarm.com>
domain names 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 confusingly
similar domain names despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain names pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also
For these reasons, the Panel concludes Complainant has satisfied Policy ¶ 4(a)(iii).
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 <askstatefarm.com> and <justaskstatefarm.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 23, 2007
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