State Farm Mutual Automobile Insurance Company v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0804001176762
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 <statefarmretires.com>, registered with Above, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April
14, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 5, 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@statefarmretires.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <statefarmretires.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmretires.com> domain name.
3. Respondent registered and used the <statefarmretires.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and the financial services industries under the STATE FARM mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585). Complainant began using the STATE FARM mark in 1930 and uses the mark in print, on television, and on the Internet to advertise its services.
Respondent registered the <statefarmretires.com>
domain name
on November 27, 2007. Respondent’s
disputed domain name resolves to a website containing links and advertisements
to third-party products and services in competition with Complainant. On January 11, 2008, Respondent responded to
Complainant’s e-mail stating that Respondent would sell the disputed domain
name for $125.00, where registration costs were no larger than $35.00.
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 has established rights in
the STATE FARM mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that Respondent’s <statefarmretires.com> domain name is confusingly
similar to Complainant’s STATE FARM mark.
Respondent’s disputed domain name contains Complainant’s mark in its
entirety, adds the generic term “retires” which is associated with
Complainant’s business, and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the use of
an established mark in combination with a generic term with an obvious
relationship to Complainant’s business creates a confusingly similar disputed
domain name for purposes of Policy ¶ 4(a)(i).
See Marriott Int’l, Inc. v.
Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding
that the respondent’s domain name <marriott-hotel.com> is confusingly
similar to the complainant’s MARRIOTT mark); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov.
22, 2000) (finding that “Respondent does not by adding the common descriptive
or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new
or different marks in which it has rights or legitimate interests, nor does it
alter the underlying [PG&E] mark held by Complainant”). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
a complainant’s mark. See Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <statefarmretires.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case. 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 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).
Due to Respondent’s failure to respond to the Complaint, the
Panel assumes that Respondent does not have rights or legitimate interests in
the disputed domain name. See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the
respondent’s failure to produce requested documentation supports a finding for
the complainant); see also Broadcom
Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Complainant asserts that Respondent is neither commonly
known by the disputed domain name, nor licensed to register domain names using
the STATE FARM mark. Respondent’s WHOIS
information identifies Respondent as “Transure Enterprise Ltd.,” and therefore
lacks any defining characteristics relating it to the disputed domain
name. Therefore, the Panel finds that
without affirmative evidence of being commonly known by the disputed domain
name, Respondent lacks all rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum
Complainant asserts that
Respondent is using a confusingly similar domain name in order to attract
Internet users to a website containing third-party links to websites in
competition with Complainant. The Panel
finds that intentionally diverting unknowing Internet users to a confusingly
similar disputed domain name and offering links to competing websites is
neither a bona fide offering of goods
and services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to 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
Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5,
2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
In addition, Complainant asserts that Respondent offered to transfer the <statefarmretires.com> domain name for $125.00. The Panel finds that Respondent’s offering to sell the disputed domain name is further evidence that Respondent lacks all rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of the <statefarmretires.com>
domain name
to offer links to third-party websites in competition with Complainant is
evidence of bad faith. The Panel finds
that a registered domain name used primarily to disrupt the business prospects
of a competitor is an illustration of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO
Respondent’s use of the <statefarmretires.com> domain name in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s STATE FARM mark and offering links to competing websites is further evidence of bad faith. The Panel infers that Respondent receives click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also 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)).
In addition, Complainant asserts that Respondent offered to
sell the <statefarmretires.com> domain name to Complainant
for $125.00. The Panel holds that
Repondent’s offer to sell the disputed domain name for an amount in excess of
the out-of-pocket expenses for the registration of the domain name is evidence
of bad faith pursuant to Policy ¶ 4(b)(i).
See Neiman Marcus
Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <statefarmretires.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 22, 2008
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