State Farm Mutual Automobile Insurance Company v. AutoGlassExperts Inc.
Claim Number: FA1010001350767
Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), represented by Debra J. Smith of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is AutoGlassExperts Inc. ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net>, registered with GoDaddy.com, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2010; the National Arbitration Forum received payment on October 6, 2010«DateHardCopy».
On October 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@statefarmautoglasstx.com, postmaster@statefarmautoglasstx.net, postmaster@statefarmautoglassclaimstx.com, and postmaster@statefarmautoglassclaimstx.net. Also on October 8, 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 November 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names.
3. Respondent registered and used the <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names 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 financial services industry. Complainant owns a trademark registration for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent, AutoGlassExperts Inc., registered the <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names on July 22, 2010. The disputed domain names all redirect to the <fwautoglassexperts.com> domain name, which is Respondent’s own web page for its glass repair and replacement company.
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 owns a trademark registration for the STATE FARM mark with the USPTO (Reg. No. 1,979,585 issued June 11, 1996). The Panel finds that a USPTO trademark registration conclusively proves Complainant’s rights in the STATE FARM mark for the purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names are confusingly similar to Complainant’s STATE FARM mark. The <statefarmautoglasstx.com> and <statefarmautoglasstx.net> disputed domain names begin with the STATE FARM mark and add descriptive, generic, or geographic terms—“auto,” “glass,” and “tx”—along with either the “.net” or “.com” generic top-level domain (“gTLD”). The <statefarmautoglassclaimstx.com> and <statefarmautoglassclaimstx.net> domain names similarly begin with the STATE FARM mark, combined with descriptive, generic, and geographic terms—“auto,” “glass,” “claims,” and “tx”—and either the “.net” or “.com” gTLD. The Panel finds that merely adding generic, descriptive, or geographic terms to Complainant’s mark fails to prevent a finding of confusing similarity according to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). The Panel also finds that attaching a gTLD does not distinguish the disputed domain names from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names are confusingly similar to Complainant’s STATE FARM mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not possess rights and legitimate interests in the disputed domain names. After putting forth a prima facie case against Respondent, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain names. The Panel finds that Complainant adequately proved its allegations to establish a prima facie case, and the Panel can infer from Respondent’s lacks of response that Respondent does not dispute Complainant’s assertion that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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.”).
Complainant argues that Respondent is not associated with, affiliated with, or sponsored by Complainant. Complainant asserts that Complainant did not authorize Respondent to register the disputed domain names or use its STATE FARM mark for Respondent’s business purposes. Complainant contends that Respondent has never performed business under the disputed domain names and is not authorized to sell products, engage in sponsorships, or provide services for or on behalf of Complainant. The WHOIS information for the disputed domain names lists the registrant of the disputed domain names as “AutoGlassExperts Inc.,” a name with does not facially appear related to the disputed domain names. Complainant thus alleges, and the Panel agrees, that Respondent is not commonly known by the disputed domain names and does not possess rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant contends that Respondent’s disputed domain names redirect Internet users to Respondent’s commercial website at the <fwautoglassexperts.com> domain name. The Panel finds that using Complainant’s mark in the disputed domain names to redirect its potential customers to Respondent’s unassociated website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has registered four disputed domain names that appropriate Complainant’s STATE FARM mark. The Panel finds that Respondent’s registration of multiple infringing domain names in a single instance indicates a pattern of domain name registration in bad faith under 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 Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Complainant argues that Respondent uses the disputed domain names containing Complainant’s mark to attract Internet users seeking Complainant. Complainant asserts that Respondent then redirects these Internet users to Respondent’s own commercial website dealing with auto glass repair and replacement, creating a likelihood of confusion as to an affiliation between Complainant and Respondent,. The Panel finds that Respondent’s efforts to attract, confuse and profit from Complainant’s customers and the misuse of Complainant’s mark demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds 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 <statefarmautoglasstx.com>, <statefarmautoglasstx.net>, <statefarmautoglassclaimstx.com>, and <statefarmautoglassclaimstx.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 24, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page