State Farm Mutual Automobile Insurance Company v. Forsyte Corporation
Claim Number: FA0805001191865
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
NAMES
The domain names at issue are <statefarminsurancejobs.com> registered with Availabledomains.ca and <statefarmmt.com> registered with . Domainnetwork.ca.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 20, 2008.
On May 21, 2008, Availabledomains.ca confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancejobs.com> domain name is registered with Availabledomains.ca, and that Respondent is the current registrant of the name. Availabledomains.ca has verified that Respondent is bound by the Availabledomains.ca 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 May 21, 2008, Domainnetwork.ca confirmed by e-mail to the National Arbitration Forum that the <statefarmmt.com> domain name is registered with Domainnetwork.ca and that Respondent is the current registrant of the name. Domainnetwork.ca has verified that Respondent is bound by the Domainnetwork.ca registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On May
30, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 19, 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@statefarminsurancejobs.com and
postmaster@statefarmmt.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <statefarmmt.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent’s <statefarminsurancejobs.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
3. Respondent does not have any rights or legitimate interests in the <statefarminsurancejobs.com> and <statefarmmt.com> domain names.
4. Respondent registered and used the <statefarminsurancejobs.com> and <statefarmmt.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, 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 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 registered the mark with the USPTO on September 11, 1979 (Reg. No. 1,125,010).
Respondent registered
the <statefarminsurancejobs.com> domain name on November 21, 2007 and the <statefarmmt.com>
domain name on December 11, 2005. Both
disputed domain names resolve to a website displaying third-party links in
direct competition with Complainant.
Additionally, Respondent has been the respondent in numerous
UDRP proceedings in which the disputed domain name was transferred from Respondent
to the complainant. See Fireman's
Fund Ins. Co. v. Forsyte Corp., FA 1055246 (Nat. Arb. Forum
Sept. 17, 2007); see also Citizens
Fin. Group, Inc. v. Forsyte Corp., FA 1086584 (Nat. Arb. Forum Nov. 12,
2007); see also Hershey Chocolate
& Confectionery Corp. v. Forsyte Corp., (Nat. Arb. Forum Nov. 26,
2007); see also Eflexgroup v. Forsyte Corp., FA 1154172 (Nat. Arb. Forum
April 17, 2008).
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 Expedia, Inc. v.
Emmerson, FA 873346 (Nat.
Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO
adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶
4(a)(i).”); see also Enter.
Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007)
(finding that the complainant’s timely registration with the USPTO and
“subsequent use of the ENTERPRISE mark for over 20 years sufficiently
establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”). Also, Complainant has had its trademark
rights validated by many previous UDRP panels.
See State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds that Respondent’s <statefarminsurancejobs.com> 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 “jobs”
which has an obvious relationship to Complainant as a business. The Panel also finds that Respondent’s <statefarmmt.com> domain name is confusingly
similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i) as it contain
Complainant’s entire mark without the space, as well as adding the two letters
“mt.” Both disputed domain names have
the generic top-level domain “.com.” The
Panel finds that this addition is insufficient to distinguish the disputed
domain names from Complainant’s marks. 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); see also 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).
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 <statefarminsurancejobs.com> and <statefarmmt.com> 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 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 <statefarminsurancejobs.com>
and <statefarmmt.com>
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 <statefarminsurancejobs.com> and <statefarmmt.com> 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. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent lacked rights in a domain name when the respondent was not known by the mark); see also 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").
The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been the
respondent in numerous UDRP proceedings in which the disputed domain name was
transferred from Respondent to the complainant.
See Fireman's Fund
Ins. Co. v. Forsyte Corp., FA 1055246 (Nat. Arb. Forum Sept.
17, 2007); see also Citizens Fin.
Group, Inc. v. Forsyte Corp., FA 1086584 (Nat. Arb. Forum Nov. 12, 2007); see also Hershey Chocolate &
Confectionery Corp. v. Forsyte Corp., (Nat. Arb. Forum Nov. 26, 2007); see also Eflexgroup v. Forsyte Corp., FA 1154172 (Nat. Arb. Forum
April 17, 2008).
The Panel finds that Respondent’s
pattern of registering multiple infringing domain names demonstrates bad faith
registration and use pursuant Policy ¶ 4(b)(ii). See Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies the
burden imposed by the Policy ¶ 4(b)(ii)); see
also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain names that infringe upon others’ famous and
registered trademarks).
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 <statefarminsurancejobs.com> and <statefarmmt.com> 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 <statefarminsurancejobs.com>
and <statefarmmt.com>
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 <statefarminsurancejobs.com> and <statefarmmt.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
July 8, 2008
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