State Farm Mutual Automobile Insurance Company v. Private Registrations Aktien Gesellschaft Domain Admin
Claim Number: FA1002001308139
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 <statefarmmutal.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 15, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
On February 25, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <statefarmmutal.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has 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 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2010, by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@statefarmmutal.com. Also on March 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <statefarmmutal.com>, is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate interests in the <statefarmmutal.com> domain name.
3. Respondent registered and used the <statefarmmutal.com> 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 company doing business in both the insurance and financial services industries. Complainant owns trademark registrations for the STATE FARM and related marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent, Private Registrations Aktien Gesellschaft Domain Admin, registered the <statefarmmutual.com> domain name March 30, 2008. The disputed domain name redirects to a directory site featuring various third-party links, many of which relate to and compete with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns trademark registrations for the STATE FARM
and related marks with the USPTO (e.g.,
Reg. No. 1,979,585 issued June 11, 1996).
The Panel finds that such trademark registrations sufficiently establish
Complainant’s rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i), regardless of whether Respondent lives or operates in
the same country where the mark is registered.
See Reebok Int’l
Ltd. v.
Complainant contends that Respondent’s <statefarmmutual.com> disputed domain
name is confusingly similar to Complainant’s STATE FARM mark. The only differences between the disputed
domain name and Complainant’s mark are the addition of the descriptive term
“mutual,” the deletion of the space between the two words of Complainant’s mark,
and the affixation of the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of a descriptive
term to Complainant’s mark, especially a term that relates to Complainant, is
insufficient to distinguish the domain name and results in a confusingly
similar domain name according to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
Therefore, this Panel finds that Respondent’s <statefarmmutual.com> disputed domain name is confusingly similar to Complainant’s STATE FARM mark according to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant urges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must make a prima facie case in support of these contentions under ICANN Policy ¶ 4(a)(ii). Complainant has done so here and the burden of proof shifts to Respondent to demonstrate rights and legitimate interests in the disputed domain name. Respondent, however, did not respond to the complaint and has not met the burden of demonstrating rights and legitimate interests. In such circumstances, the Panel is permitted to find that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int’l, D2002-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). This Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent has no rights and legitimate interests in the disputed domain name since the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name. The Panel finds that the failure of the WHOIS information to nominally associate Respondent with the disputed domain name supports the conclusion that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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 Saunders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant further argues that no evidence supports any contention that Respondent has rights and legitimate interests in the disputed domain name because Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶¶ 4(c)(i) and 4(c)(iii). Respondent’s disputed domain name redirects to a directory website with no function other than displaying links to other web pages, many of which are advertised to be in competition with Complainant. The directory website presumably gives Respondent monetary gain through “pay-per-click” fees. The Panel finds that such directory websites do not comply with the requirements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), and therefore the Panel finds that Respondent has no rights orlegitimate interests in the disputed domain name. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent uses the disputed domain name to redirect Internet users to a directory page featuring many third-party links offering services in competition with Complainant. This directory page substantially disrupts Complainant’s business because unsuspecting Internet users are directed away from Complainant’s actual site and may subsequently follow one of the displayed links to arrive at a competitor’s site. The Panel finds that such efforts to disrupt Complainant’s business permit findings of bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent’s operation of a directory website reached through the disputed domain name presumably financially benefits Respondent. By displaying links that are related to Complainant’s business, a greater likelihood exists that the links will be of interest to Internet users arriving at the site and that the Internet users will subsequently click on one of them. Each click results in profit to Respondent by way of “click-through” fees. The Panel finds that Respondent’s efforts to increase traffic to its site and consequently profit by attracting Complainant’s customers are evidence that support findings of bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 32, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmmutal.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 12, 2010
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