State Farm Mutual Automobile Insurance Company v. lnnca c/o Wenting Liu
Claim Number: FA0701000882164
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 lnnca c/o Wenting Liu (“Respondent”), Flat 21,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <state-farm-ins.info>, registered with RegisterFly.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she 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 January 5, 2007; the National Arbitration Forum received a hard copy of the Complaint January 8, 2007.
On January 5, 2007, RegisterFly.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <state-farm-ins.info> domain name is registered with RegisterFly.com, Inc. and that Respondent is the current registrant of the name. RegisterFly.com, Inc. verified that Respondent is bound by the RegisterFly.com, Inc. 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 January 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 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@state-farm-ins.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 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, <state-farm-ins.info>, is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent has no rights to or legitimate interests in the <state-farm-ins.info> domain name.
3. Respondent registered and used the <state-farm-ins.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a nationally known insurance and financial services company. In connection with the provision of its commercial services, Complainant registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the STATE FARM INSURANCE mark (Reg. No. 1,125,010 issued September 11, 1979).
Respondent registered the <state-farm-ins.info> domain name June 2, 2006. The disputed domain name resolves to a website displaying links for various products, including insurance products from companies that directly compete with Complainant.
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.
Complainant established with extrinsic evidence in this
proceeding that it has legal rights in the STATE FARM INSURANCE mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration and extensive use of the STATE
FARM INSURANCE mark is sufficient to establish rights in the mark pursuant to
Policy ¶ 4(a)(i). See 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.”); see also 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.”).
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name contains the distinctive portion of Complainant’s STATE FARM INSURANCE mark, a series of hyphens and the term “ins,” which is a common abbreviation for the term “insurance.” The Panel finds that the use of hyphens and a common abbreviation fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i) and that the domain name is confusingly similar to a mark in which Complainant has protected rights. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights in the mark contained in its entirety within the disputed domain name that Respondent registered. Complainant alleges that Respondent lacks such rights or legitimate interests in the disputed domain name. Where Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to set forth substantial evidence establishing rights or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the disputed domain name to re-direct
Internet users to a website displaying links to websites that compete with
Complainant’s business, presumably with the intent of receiving commercial
gain. The Panel finds that Respondent’s use of the disputed domain name is not
a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
use pursuant to Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec.
31, 2002) (finding that respondent’s diversionary use of complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party websites
is neither a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
because the registrant presumably receives compensation for each misdirected
Internet user).
Complainant further contends that Respondent is not commonly
known by the disputed domain name and is not authorized to register domain
names using Complainant’s mark in any way.
The Panel finds that Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. Online, Inc. v. World Photo Video & Imaging
Corp., FA 109031 (Nat. Arb. Forum May
13, 2002) (finding respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> and was doing business
as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
The Panel finds that
Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website featuring links to a variety of websites, some of which directly compete with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name that contains in its entirety Complainant’s protected mark to compete with Complainant constitutes a disruption pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); 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)).
Further, Respondent presumably receives commercial gain by redirecting unsuspecting Internet users seeking Complainant’s services to Respondent’s own website, which provides links to various websites that attempt to compete with Complainant. The Panel finds that such use evinces bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
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 <state-farm-ins.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 22, 2007.
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