State Farm Mutual Automobile Insurance Company v. VistaPrint Technologies Ltd
Claim Number: FA1709001749260
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsurnacecom.com> (‘the Domain Name’), registered with Tucows Domains 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2017; the Forum received payment on September 15, 2017.
On September 18, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <statefarminsurnacecom.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@statefarminsurnacecom.com. Also on September 18, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant’s contentions can be summarised as follows:
State Farm is a nationally known insurance company that has been doing business since 1930 under the mark STATE FARM which is distinctive and is registered, inter alia, in Canada for insurance services. It owns statefarm.com.
The Domain Name registered in 2017 resolves to a web page for Vista Print websites. Respondent did not reply to a cease and desist letter.
The Domain Name is confusingly similar to Complainant’s mark containing it in its entirety.
Respondent has no right or legitimate interest in the Domain Name. Respondent is not associated with Complainant and Complainant has not authorised Respondent to use its mark. Respondent is not commonly known by the Domain Name.
The use of an established trade mark to generate business for one’s own purposes is bad faith registration and use under the Policy. Further the Domain Name is typosquatting and that is itself bad faith. Not to answer the cease and desist letter is also an indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
State Farm is a nationally known insurance company doing business under the mark STATE FARM registered, inter alia, in Canada for insurance services with first use in Canada recorded as 1939. It owns statefarm.com.
The Domain Name registered in 2017 resolves to a web page for Vista Print advertising its services and providing a link to the same. Respondent did not reply to a cease and desist letter.
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."
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.
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(f), 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 (Forum July 31, 2000) (holding that 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.”).
Identical and/or Confusingly Similar
Complainant is a provider of insurance services and is the owner of registered trademarks for or including STATE FARM in the United States, Canada and elsewhere with first use in Canada recorded as 1939 in the documents before the panel.
The Domain Name consists of a name identical to Complainant's registered mark STATE FARM plus the generic word insurance misspelled, the generic term ‘com’ and the gTLD .com. The addition of the misspelling of the generic word ‘insurance’ and the generic term ‘com’ does not serve to distinguish the Domain Name from Complainant's STATE FARM mark, nor does the addition of a gTLD and the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy. See Gillette CO v RFK Assocs, FA 492867 (Forum July 28, 2005)(finding that the addition of a generic term and the gTLD .com were insufficient to distinguish the domain name from Complainant’).
As such the Panel finds that Complainant has satisfied the first limb of the Policy.
Rights or Legitimate Interests
Respondent is not commonly known by the Domain Name and does not have any authorization from Complainant to use its mark.
It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote third party goods and services diverting traffic of those looking for Complainant. The use of the term ‘insurance’ albeit misspelled in relation to Complainant’s mark shows Respondent was aware of Complainant and its business at the time of registration of the Domain Name. The usage is not fair as the site does not make it clear that there is no commercial connection with Complainant. The Panel finds this use confusing. As such it cannot amount to the bona fide offering of goods and services. See Bank of AM Corp. v New. Free Cmty. Access, FA 180704 (Forum Sept 30, 2003) (Respondent’s demonstrated intent to divert Internet users seeking Complainant’s web site to website of Respondent and for Respondent’s benefit is not a bona fide offering of goods and services under Policy 4 ( c ) (i) and it is not a legitimate non commercial or fair use under Policy 4 ( c ) (iii).) Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s name and logo in this way.
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent's use of the site is commercial and it is using the site to make a profit from services in a confusing manner causing disruption. The use of the misspelled word insurance in relation to Complainant’s mark in the Domain Name makes it clear that Respondent was aware of Complainant’s rights at the time of registration. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it sufficient to satisfy paragraph 4 (b)(iv) of the Policy. See CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users to its own site where it offered its own services).
Further the Domain Name with its misspellings and extra ‘com’ appears to be an example of typosquatting which has been widely held to be registration and use in bad faith in itself as words are intentionally misspelled to attract users to Respondent when they are looking for Complainant. Respondent did not reply to a cease and desist letter.
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminsurnacecom.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page