State Farm Mutual Automobile Insurance Company v. Above.com Domain Privacy
Claim Number: FA1101001367034
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 Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com>, registered with Above.com Pty Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2011; the National Arbitration Forum received payment on January 11, 2011.
On January 13, 2011, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <state4farm.com>, ,<stategfarm.com>, ,<statevfarm.com>, ,<statefarmj.com>, ,<wwwwstatefarm.com> domain names are registered with Above.com Pty Ltd and that Respondent is the current registrant of the names. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd 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 January 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2011 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@state4farm.com, postmaster@stategfarm.com, postmaster@statevfarm.com, postmaster@statefarmj.com, and postmaster@wwwwstatefarm.com. Also on January 17, 2011, 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 February 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant does in business in the insurance and financial services industries.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM service mark (including Reg. No. 1,979,585, issued June 11, 1996).
Respondent registered the domain names <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> on November 15, 2010.
The disputed domain names resolve to directory websites that carry hyperlinks to third-party websites, including those of Complainant’s business competitors.
Respondent’s <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM service mark.
Respondent is not associated or affiliated with, or sponsored by, Complainant.
Complainant has not authorized Respondent to register the domain names or to use the State Farm trademark.
Respondent is not commonly known by any of the domain names.
Respondent does not have any rights to or legitimate interests in any of the domain names <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com>.
Respondent registered and uses the <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the STATE FARM service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007):
Complainant has established rights in the … mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).
See also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that a complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States national trademark authority).
It is irrelevant for this purpose whether Complainant holds a registration with a trademark authority in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> domain names are confusingly similar to its STATE FARM mark. Each of the domains fully incorporates the STATE FARM mark and merely omits the space between the terms in the mark. Additionally, Respondent adds the numeral “4,” the letter “g,” the letter “v,” and the letter “j” to Complainant’s marks in the <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com> domain names, and adds the letters “wwww” to the mark in forming the <wwwwstatefarm.com> domain name. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in all of the disputed domain names. These alterations of and additions to the mark do not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to a complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by a trademark with no period separating them did not distinguish the mark and was confusingly similar to it); further see 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 concludes that Respondent’s <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM service mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in each of the <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> domain names. The burden then shifts to Respondent to prove that it nonetheless has rights to or legitimate interests in the domains. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Respondent has failed to respond to the Complaint filed in this proceeding. We may properly view that failure as evidence that Respondent lacks rights to and legitimate interests in the contested domains. See 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 to the Complaint, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in any of the disputed domain names which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not associated or affiliated with, or sponsored by, Complainant, that Complainant has not authorized Respondent to register the domain names or to use the State Farm trademark, and that Respondent is not commonly known by any of the domain names. Further, the pertinent WHOIS information lists the registrants of the subject <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> domain names only as “Above.com Domain Privacy”, which is not similar to any of the disputed domain names. On this record, we must conclude that Respondent is not commonly known by any of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in any of them under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” was a factor in determining that Policy ¶ 4(c)(ii) did not apply).
We also note that Complainant submits, without objection from Respondent, that the contested domain name resolve to websites that feature hyperlinks to a variety of third-party websites, including websites of Complainant’s competitors in the insurance industry. In the circumstances here presented, we may comfortably presume that Respondent profits from its use of the disputed domain names in the manner alleged through the receipt of pay-per-click or similar fees. Therefore, we conclude that Respondent does not use the disputed domain names to make 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 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), finding that:
using the confusingly similar … domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(ii).
The disputed domain names redirect Internet users seeking Complainant’s insurance services to websites that provide hyperlinks to Complainant’s business competitors. This disrupts Complainant’s business and evidences registration and use of each of the domains in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a search engine with links to the complainant’s commercial competitors).
Respondent likely profits from its use of the disputed domain names, in the manner alleged in the Complaint, through the receipt of pay-per-click or similar fees. Respondent thus attempts, for commercial gain, to attract Internet users to its websites by creating a likelihood of confusion with Complainant’s STATE FARM mark as to the possibility of that Complainant is a source, sponsor, affiliate or endorser of Respondent’s websites. This is evidence that Respondent registered and uses the contested domain names in bad faith within the meaning of Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to the business of a complainant and to generate click-through revenue suggested bad faith registration and use of the domain under Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain, likely profiting from this diversion scheme).
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <state4farm.com>, <stategfarm.com>, <statevfarm.com>, <statefarmj.com>, and <wwwwstatefarm.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 15, 2011
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