State Farm Mutual Automobile Insurance
Company v. George Hanos
Claim Number: FA1005001325197
PARTIES
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 <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>, registered
with MELBOURNE IT LTD, GoDaddy.com, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically May 18, 2010; the Forum received a hard copy of
the Complaint May 18, 2010.
On May 18, 2010; May 19, 2010, MELBOURNE IT LTD, GoDaddy.com, Inc.
confirmed by e-mail to the Forum that the <mystatefarmagent.us>, <mystatefarminsurance.us>,
and <statefarmauto.us> domain names are registered
with MELBOURNE IT LTD, GoDaddy.com, Inc. and that Respondent is the current
registrant of the name. MELBOURNE IT
LTD, GoDaddy.com, Inc. verified that Respondent is bound by the MELBOURNE IT
LTD, GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 26, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 15, 2010, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On June 17, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegation in this proceeding:
1. The domain names that Respondent registered, <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>, are confusingly similar to Complainant’s STATE FARM mark.
2.
Respondent has no rights to or legitimate
interests in the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>
domain names.
3.
Respondent registered and used the <mystatefarmagent.us>, <mystatefarminsurance.us>, and
<statefarmauto.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, State Farm Mutual Automobile Insurance Company, offers
auto, life, and home insurance products and services. Complainant has been operating under the name
“State Farm” since 1930. Complainant
holds numerous trademark registrations of the STATE FARM mark with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent, George Hanos, registered the
disputed <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>
domain names October 22, 2009. The <mystatefarminsurance.us> and
<statefarmauto.us> domain names resolve to parked websites. These sites provide links to third-party
websites, some of which provide insurance products and services that directly
compete with Complainant’s business. The
<mystatefarmagent.us> domain name resolves to a website that
states it is under construction.
On December 30, 2010, Respondent telephoned
Complainant and requested $150.00 for the disputed domain names. On January 12, 2010, Complainant replied to
Respondent’s offer via mail, stating it would reimburse Respondent $150.00 in
exchange for Respondent’s signed agreement that he would not register any other
domain names using Complainant’s trademarks.
Complainant did not receive a response from Respondent.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the 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 or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
to and/or Confusingly Similar
Complainant asserts rights in the STATE FARM
mark through its numerous registrations of the mark with the USPTO (e.g., Reg.
No. 1,979,585 issued June 11, 1996). The
Panel finds that these registrations establish Complainant’s rights in the mark
under Policy ¶ (4)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
[UDRP] Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under [UDRP] Policy ¶ 4(a)(i)).
Complainant urges that Respondent’s <mystatefarmagent.us>, <mystatefarminsurance.us>, and
<statefarmauto.us> domain
names are confusingly similar to its STATE FARM mark. Respondent fully incorporates Complainant’s
mark in each of the disputed domain names.
Respondent also includes the generic terms “my,” “agent,” and “auto” and
the descriptive term “insurance,” which describes Complainant’s industry, in
the disputed domain names. The Panel
finds that these additional terms do not create domain names that are distinguished
from Complainant’s mark. Furthermore,
the Panel finds that the addition of the country code top-level domain
(“ccTLD”) “.us” does not negate the similarity between Complainant’s mark and
the disputed domain names. See Arthur Guinness Son & Co. (
Therefore, the Panel finds that the disputed
domain names <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> are confusingly similar to Complainant’s STATE
FARM mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights
to or Legitimate Interests
Complainant must first show that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden of proof shifts to Respondent to demonstrate it has rights or legitimate interests. Prior panels have interpreted Respondent’s failure to submit a Response as evidence of Respondent’s lack of rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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.”). Despite Respondent’s failure to submit a response, the Panel still analyzes the record to determine if the evidence before the Panel suggests that Respondent does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
No evidence in the record suggests that Respondent owns any service marks or trademarks that reflect the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names. Therefore, the Panel finds that Respondent does not have rights or legitimate interests under a Policy ¶ 4(c)(i) analysis. See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to [UDRP] Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant relates
as well that Respondent is not associated with, affiliated with, or sponsored
by Complainant. Complainant also urges
that it has not given Respondent permission to use its mark in a domain name. Furthermore, the WHOIS information lists the
registrant of the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us>
domain names as “George Hanos,” indicating that Respondent is not
commonly known by the disputed domain names.
Without evidence to the contrary, the Panel finds that Respondent is not
commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name);
see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant provides evidence that the <mystatefarminsurance.us> and <statefarmauto.us> domain names resolve to parked websites. Complainant alleges that these sites provide links to third-party websites, some of which provide insurance products and directly compete with Complainant’s business. The Panel finds that Respondent’s use of confusingly similar domain names for this purpose does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to [UDRP] Policy ¶ 4(c)(iii)); see also 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).
Next, Complainant asserts the <mystatefarmagent.us>
domain name resolves to a website that states it is under construction. The Panel finds that Respondent’s failure to
make active use of the disputed domain name suggests that Respondent does
not use the <mystatefarmagent.us> domain
name for a bona fide offering of
goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iv). See Pirelli & C. S.p.A. v. Tabriz, FA 921798
(Apr. 12, 2007) (finding that the respondent lacked rights or legitimate
interests in a confusingly similar domain name that it had not made
demonstrable preparations to use since its registration seven months prior to
the complaint); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that
the “under construction” page, hosted at the disputed domain name, did not
support a claim of right or legitimate interest under [UDRP] Policy ¶
4(a)(ii)).
In addition, Respondent offered to sell the disputed domain names to Complainant for $150.00. The Panel finds this offer provides further evidence that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); 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).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names containing Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Complainant also alleges that Respondent
registered and used the disputed domain names in bad faith. The Panel finds that Respondent’s attempt to
sell the disputed domain names to Complainant is evidence of and supports
findings of bad faith registration and use under Policy ¶ 4(b)(i). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under [UDRP] Policy ¶ 4(b)(i).”); see also
Little Six, Inc. v. Domain For
Complainant argues that the <mystatefarminsurance.us> and <statefarmauto.us> domain
names divert Internet consumers seeking Complainant’s business to Respondent’s websites. The Panel finds that Respondent’s use of the disputed
domain names, <mystatefarminsurance.us> and <statefarmauto.us>, to resolve to websites that
feature links to third-party websites that compete with Complainant’s business
disrupts Complainant’s business and also supports findings of bad faith
registration and use in bad faith under Policy ¶ 4(b)(iii). See
St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to [UDRP] Policy ¶
4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to [UDRP] Policy ¶¶
4(b)(iii) [and] (iv).”).
Additionally, the Panel finds that Internet users searching for Complainant’s products may become confused as to Complainant’s sponsorship of or affiliation with the disputed <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names. Therefore, the Panel finds this to be additional evidence to support findings of Respondent’s registration and use in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to [UDRP] Policy ¶ 4(b)(iv)).
The Panel also finds that Respondent’s failure to make active use of the disputed <mystatefarmagent.us> domain name supports additional findings of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of [UDRP] ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Respondent registered and used or passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mystatefarmagent.us>, <mystatefarminsurance.us>, and <statefarmauto.us> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 1, 2010.
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