State Farm Mutual Automobile Insurance Company v. Pongphap Awoopsopa
Claim Number: FA0803001163684
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 <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info>, registered with MyDomain, 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 March 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 17, 2008.
On March 14, 2008, MyDomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names are registered with MyDomain, Inc. and that Respondent is the current registrant of the names. MyDomain, Inc. has verified that Respondent is bound by the MyDomain, 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 March 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 2008 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@statefarminsurancecompany.info, postmaster@statefarmautoinsurancequote.info, and postmaster@statefarmautoinsurancequotes.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2008, 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 <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names are confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks.
2. Respondent does not have any rights or legitimate interests in the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names.
3. Respondent registered and used the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm, has been in the business of insurance since 1930 and financial services since 1999. Complainant uses the STATE FARM mark in accordance with this business and has registered the mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585). Complainant also uses the STATE FARM INSURANCE mark in accordance with this business and has registered the mark with the USPTO on September 11, 1979 (Reg. No. 1,125,010).
Respondent’s <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names, which were each registered on January 9, 2008, resolve to parked pages with nonsensical articles and direct links to Complainant’s competitors in the insurance industry.
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.
The Panel finds that Complainant’s trademark registrations with the USPTO sufficiently establish Complainant’s rights in the STATE FARM and STATE FARM INSURANCE marks pursuant to Policy ¶ 4(a)(i). 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that Respondent’s <statefarminsurancecompany.info> domain name is confusingly similar to
Complainant’s STATE FARM INSURANCE mark under Policy ¶ 4(a)(i)
as it contains Complainant’s entire mark without the spaces and adds the
generic term “company” which has an obvious relationship to Complainant as a
business. The Panel also finds that
Respondent’s <statefarmautoinsurancequote.info> and <statefarmautoinsurancequotes.info>
domain names are confusingly similar to Complainant’s STATE FARM INSURANCE mark
under Policy ¶ 4(a)(i) as they contain Complainant’s entire mark without the
spaces, add the generic term “auto” in between the second and third word of the
mark, and add either the singular or plural of the generic term “quote,” all of
which have an obvious relationship to Complainant’s business of insurance products. See Gurney’s Inn Resort & Spa Ltd. v.
Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and
spaces between words are not significant in determining the similarity of a
domain name and a mark because punctuation and spaces are not reproducible in a
domain name.”); see also Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see
also Am. Int’l Group, Inc. v. Ling
Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that
the addition of the term “assurance,” to the complainant’s AIG mark failed to
sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i)
because the appended term related directly to the complainant’s business). When evaluating if the
disputed domain names are confusingly similar, the addition of a generic
top-level domain “.info” is irrelevant. See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat.
Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, Respondent’s disputed
domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks rights and legitimate interests with respect to the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names under Policy ¶ 4(a)(ii). However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. The failure of the Respondent to respond furthers the presumption that Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has established a prima facie case but chooses to examine all the evidence before making a final determination with regards to 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Respondent is using the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>,
and <statefarmautoinsurancequotes.info> domain names to
display hyperlinks to parked pages with lists of third-party websites, some of
which are in direct competition with Complainant. The Panel infers that Respondent is using the
disputed domain names to earn click-through fees, and thus finds that
Respondent has not made 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 TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the 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).
Additionally, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain names. Moreover, Complainant asserts that Respondent is not authorized to use either Complainant’s STATE FARM or STATE FARM INSURANCE marks and that Respondent is not associated with Complainant in any way. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) the panel found that the respondent did not have rights in a domain name when the respondent was not known by the mark. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(ii).
Based on the uncontested evidence presented by Complainant,
the Panel finds that Respondent receives click-through fees for the hyperlinks
displayed on the websites that resolve from the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info>
domain names. The Panel also finds that
Respondent’s disputed domain names are capable of creating a likelihood of
confusion as to Complainant’s sponsorship and affiliation with the disputed
domain names and corresponding websites.
Such commercial benefit constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a
domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith.”); see also 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.’”).
Moreover, the Panel finds that
Respondent is using the <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>,
and <statefarmautoinsurancequotes.info> domain names to redirect Internet users to websites that contains
third-party hyperlinks, some of which are in direct competition with
Complainant. Such use constitutes a
disruption of Complainant’s business and qualifies as bad faith registration
and use under Policy ¶ 4(b)(iii). See 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)); see
also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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).
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 <statefarminsurancecompany.info>, <statefarmautoinsurancequote.info>, and <statefarmautoinsurancequotes.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 1, 2008
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