State Farm Mutual Automobile Insurance Company v.
Nubian
Claim Number: FA0708001055112
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 <statefarmautorates.com> and <statefarmcarquotes.com>, registered with Domain-It, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2007.
On August 8, 2007, Domain-It, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautorates.com> and <statefarmcarquotes.com> domain names are registered with Domain-It, Inc. and that Respondent is the current registrant of the names. Domain-It, Inc. has verified that Respondent is bound by the Domain-It, 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 August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 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@statefarmautorates.com and postmaster@statefarmcarquotes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmautorates.com> and <statefarmcarquotes.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmautorates.com> and <statefarmcarquotes.com> domain names.
3. Respondent registered and used the <statefarmautorates.com> and <statefarmcarquotes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Auto Insurance Company, is a
leading insurance and financial services provider in the
Respondent registered the <statefarmautorates.com> and <statefarmcarquotes.com>
domain names on March 2, 2007. Both of
Respondent’s disputed domain names resolve to websites featuring links to
various unrelated goods or services.
Moreover, Respondent has been a party to a previous domain name dispute
filed by Complainant with the National Arbitration Forum in which Respondent
was found to have registered the <statefarmwebquotes.com> in bad faith. See
State Farm Mut. Auto. Ins. Co. v. Nubian
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.
Complainant contends that it has established rights in the STATE FARM mark through ownership of a trademark registration with the USPTO. The Panel finds that such registration is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i). See 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.”); see also Auto. Racing Prods., Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)).
Complainant makes the assertion that Respondent’s <statefarmautorates.com> and <statefarmcarquotes.com> domain names are confusingly similar to Complainant’s registered mark. Both of Respondent’s domain names contain Complainant’s STATE FARM mark and add the generic terms “auto,” “rates,” “car,” or “quotes.” The Panel finds that the addition of generic terms, particularly those relating to the business in which Complainant engages, fails to sufficiently distinguish Respondent’s domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <statefarmautorates.com> and <statefarmcarquotes.com> domain names. In circumstances such as this where Respondent has failed to respond, the Panel accepts Complainant’s assertions as true, amounting to a prima facie case under the Policy. Once a prima facie case is made, the burden of showing rights or legitimate interests shifts from Complainant to Respondent. The Panel finds that this Complainant has succeeded in making a prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
Complainant has submitted evidence that Respondent is using
both the <statefarmautorates.com> and <statefarmcarquotes.com> domain names to operate
websites featuring links to various commercial sites unrelated to Complainant’s
financial services business. The Panel
infers from Respondent’s use of the disputed domain names that it is collecting
click-through fees for each Internet user redirected to a website other than
Complainant’s. Numerous panels before
have held that the use of a domain name found to be confusingly similar to an
established mark for the purpose of collecting click-through fees is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Black & Decker
Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24,
2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name); see also Golden Bear Int’l, Inc. v.
Kangdeock-ho, FA 190644 (Nat. Arb. Forum
Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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).”).
Moreover, Complainant contends that it has in no way
licensed Respondent to register domain names featuring Complainant’s STATE FARM
mark. The WHOIS information for both the
<statefarmautorates.com> and <statefarmcarquotes.com>
domain names list “Nubian London” as the registrant. With the record lacking in any other evidence
that would suggest Respondent is commonly known by the disputed domain names,
the Panel finds that Respondent has not established rights or legitimate
interests in the <statefarmautorates.com> and <statefarmcarquotes.com>
domain names for purposes of Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback, FA 830934
(Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name); 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant and Respondent have been parties to a previous
dispute decided under the UDRP. In State Farm Mutual Automobile
Insurance Company v. Nubian
Respondent is using the <statefarmautorates.com> and <statefarmcarquotes.com>
domain names to operate a website that features links to various commercial
websites, from which Respondent presumably collects click-through fees. The Panel finds that
Respondent’s use will likely cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the resulting websites. Profit from such confusion is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb.
Forum Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the complainant’s well-known marks, thus creating a
likelihood of confusion strictly for commercial gain).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmautorates.com> and <statefarmcarquotes.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 18, 2007
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