State Farm Mutual Automobile Insurance Company v. None c/o James Donoghue
Claim Number: FA0804001174460
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmsinsurance.info>, registered with GoDaddy Software.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 2, 2008.
On April 2, 2008, GoDaddy Software confirmed by e-mail to the National Arbitration Forum that the <statefarmsinsurance.info> domain name is registered with GoDaddy Software and that Respondent is the current registrant of the name. GoDaddy Software has verified that Respondent is bound by the GoDaddy Software 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
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 29, 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@statefarmsinsurance.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmsinsurance.info> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmsinsurance.info> domain name.
3. Respondent registered and used the <statefarmsinsurance.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known business engaged in the insurance and financial services industries. Complainant owns numerous registrations 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, None c/o James Donoghue, registered the <statefarmsinsurance.info> domain name on October 16, 2007, and is currently using the disputed domain name to display links to websites of Complainant’s competitors.
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 alleges rights to the STATE FARM INSURANCE based
on its USPTO trademark registration.
Under the Policy, registration of a mark with a pertinent government
authority, such as the USPTO, confers rights in that mark to a
complainant. For the purposes of Policy
¶ 4(a)(i) Complainant has established rights to the STATE FARM INSURANCE mark. See
Complainant alleges
Respondent’s <statefarmsinsurance.info> domain name is confusingly similar to its
STATE FARM INSURANCE mark. The disputed
domain name contains Complainant’s entire mark, deleting only the spaces
between words, and adding an “s” and the generic top-level domain (“gTLD”)
“.info.” The Panel finds the deletion of
spaces and addition gTLD are irrelevant in distinguishing the disputed domain
name from Complainant’s mark. The panel in Cream Pie
Club v. Halford, FA 95235
(Nat. Arb. Forum Aug. 17, 2000) found that “the addition
of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ [did] not prevent
the likelihood of confusion caused by the use of the remaining identical
mark.” Here, the Panel also finds that
the addition of the letter “s” does not distinguish the disputed domain name
from the mark. Therefore, the Panel concludes that
Respondent’s <statefarmsinsurance.info> domain name is confusingly
similar to Complainant’s STATE FARM INSURANCE mark pursuant to Policy ¶
4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA
93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that the respondent’s domain
name, <americanonline.com>, is confusingly similar to the complainant’s
famous
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent lacks right and legitimate interests in the <statefarmsinsurance.info> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based on the allegations presented in the Complaint, the Panel finds Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Because Respondent has not responded to the Complaint, the Panel may assume Respondent lacks rights and legitimate interests in the disputed domain name, but will examine the record to determine if such rights or interests are present pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Complainant alleges Respondent is not commonly known by the <statefarmsinsurance.info> domain name. The WHOIS information identifies Respondent as “None c/o James Donoghue” and Respondent provides no other information suggesting Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes Respondent lacks rights and legitimate interests in the <statefarmsinsurance.info> domain name pursuant to Policy ¶ 4(c)(ii). See 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.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the <statefarmsinsurance.info>
domain name to display a web page featuring links to Complainant’s
competitors. The Panel presumes Respondent
is earning click-through fees for each redirected Internet user. The Panel concludes this registration and use
of the <statefarmsinsurance.info> domain name is not in connection
with a bona fide offering of goods
and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com,
FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”).
The Panel find that Policy ¶
4(a)(ii) has been satisfied.
As stated above, Respondent is using the <statefarmsinsurance.info> domain name to redirect Internet users to a website displaying links to Complainant’s competitors. This use of the disputed domain name likely disrupts Complainant’s business by diverting potential customers to the websites of Complainant’s competitors in violation of Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); 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)).
Respondent’s <statefarmsinsurance.info> domain name features links to Complainant’s competitors, presumably earning Respondent referral fees for each redirected Internet user. By incorporating Complainant’s entire mark with only a minor variation, Respondent has also created a likelihood of confusion as to the affiliation and endorsement of the disputed domain name and corresponding website. The Panel therefore concludes Respondent has engaged in bad faith use and registration of the <statefarmsinsurance.info> domain name pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmsinsurance.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 7, 2008
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