State Farm Mutual Automobile Insurance Company v. Callum Macgregor
Claim Number: FA1009001345375
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Monke, of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Callum Macgregor (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.
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 September 8, 2010.
On September 9, 2010, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com 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 September 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@statefarmdiscountcheck.com and postmaster@statefarmdiscountdoublecheck.com by e-mail. Also on September 15, 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 October 19, 2010, 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names.
3. Respondent registered and used the <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996). Complainant uses the STATE FARM mark in connection with, among other things, its insurance and banking services.
Respondent, Callum Macgregor, registered the <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names on June 24, 2010. The <statefarmdiscountcheck.com> domain name resolves to an inactive website. The <statefarmdiscountdoublecheck.com> domain name resolves to a website that provides links to third-party websites.
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 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 these trademark registrations sufficiently prove Complainant’s rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(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 Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Additionally, the Panel finds it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges the disputed domain names are confusingly similar to its STATE FARM mark. Respondent replicates Complainant’s mark in the disputed domain names and then merely deletes the space between the words in the mark. In addition, Respondent adds the generic terms “discount” and “check” to Complainant’s mark in the <statefarmdiscountcheck.com> domain name. Respondent also adds the generic terms “discount,” “double,” and “check” to Complainant’s mark in the <statefarmdiscountdoublecheck.com> domain name. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain names. The Panel finds the addition of generic terms and a gTLD do not render Respondent’s domain names distinct from Complainant’s mark. 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 Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds the <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names are confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and 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 respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant states it is not affiliated with Respondent nor has it given Respondent permission to use its STATE FARM mark in a domain name. Additionally, the WHOIS information lists “Callum Macgregor” as the registrant of the domain names, which the Panel finds is not similar to either the <statefarmdiscountcheck.com> domain name or the <statefarmdiscountdoublecheck.com> domain name. Without evidence to the contrary, the Panel determines Complainant’s assertions combined with the WHOIS registrant information indicate that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges the <statefarmdiscountcheck.com> domain name resolves to an inactive website. Complainant submits a screen shot of the resolving website. This image shows a site that provides the message, “Domain statefarmdiscountcheck.com no longer valid.” Complainant further alleges the <statefarmdiscountdoublecheck.com> domain name resolves to a website that provides links to third-party websites. A screen shot of the resolving website shows a webpage that provides hyperlinks with titles such as “Double Check Detector,” “Text Check,” “Check Java,” “Double Check Valve,” and “Check And Double Check.” The Panel presumes that Respondent profits from its use of the <statefarmdiscountdoublecheck.com> domain name through the receipt of pay-per-click fees. Based on the evidence in the record, the Panel finds that Respondent’s <statefarmdiscountcheck.com> domain name resolves to an inactive website and Respondent’s <statefarmdiscountdoublecheck.com> domain name resolves to a pay-per-click website that provides links that are unrelated to Complainant. Accordingly, the Panel determines Respondent is not using the <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names for 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 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Furthermore, the Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Prior panels have found that failure to make active use of a domain name can constitute bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name after the complainant registered its trademark with the USPTO). Respondent registered the domain name on June 24, 2010, years after Complainant acquired rights in the STATE FARM mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996). Therefore, the Panel finds that Respondent’s passive holding of the <statefarmdiscountcheck.com> domain name qualifies as bad faith under Policy ¶ 4(a)(iii) in this case.
The Panel finds Complainant has satisfied 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 <statefarmdiscountcheck.com> and <statefarmdiscountdoublecheck.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 20, 2010
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