State Farm Mutual Automobile Insurance Company v. James Schwehr / Affinity Luxury Car Rentals
Claim Number: FA1311001529030
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is James Schwehr / Affinity Luxury Car Rentals (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmcarrentals.com>, registered with GODADDY.COM, LLC.
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 November 8, 2013; the National Arbitration Forum received payment November 8, 2013.
On November 8, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmcarrentals.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2013, 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@statefarmcarrentals.com. Also on November 11, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 9, 2013, 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 (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.
1. Complainant is a nationally known company that has been doing business as “State Farm” since 1930. Complainant’s business includes services related to the insurance and financial industries.
2. Complainant owns registrations for its STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 registered June 11, 1996) as well as with other trademark authorities nationwide.
3. Respondent’s <statefarmcarrentals.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
4. Respondent has no rights to or legitimate interests in the <statefarmcarrentals.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent is not associated with or affiliated with Complainant.
ii. Complainant did not authorize Respondent to register the disputed domain name.
b. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
c. Respondent registered the disputed domain name to create the impression of association with complainant.
5. Respondent registered and is using the <statefarmcarrentals.com> domain name in bad faith.
a. Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business.
b. Respondent uses a confusingly similar domain name to attract individuals seeking information about Complainant, thus creating confusion as to the source or sponsorship of Respondent’s website. Respondent’s disputed domain name resolves to a parked website containing click-through fees for various products and services, attempting direct competition with Complainant. As of the date of this Complaint, no legitimate content is associated with the disputed domain name, and no demonstrable indication suggests that legitimate content would be forthcoming.
c. Respondent was aware of Complainant and its registered mark when Respondent registered the disputed domain name.
1. The Panel notes that Respondent’ registered the <statefarmcarrentals.com> domain name July 22, 2013.
FINDINGS:
Complainant established that it has rights in the State Farm mark and that it has had such rights some 83 years.
Respondent has shown no such rights as to the disputed domain name that Respondent registered in 2013.
The disputed domain name is confusingly similar to Complainant’s well-known mark.
Respondent registered and used the disputed domain name 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."
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.
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.”).
Identical to or Confusingly Similar
Complainant notes that it is a nationally known company that has been doing business as “State Farm” since 1930. Complainant’s business includes services in the insurance and financial industries. Complainant owns registrations for its STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996) as well as with other trademark authorities nationwide. The Panel notes that Complainant owns registrations for the STATE FARM mark with the CIPO (e.g., Reg. No. TMA559,285 registered March 15, 2002) as well as with the OHIM (e.g., Reg. No. 10,501,997 registered May 15, 2012.) See Exhibit 1. Evidence of a registration for a given mark satisfies UDRP requirements to show rights in the mark. See Seiko Epson Corp. v. Citizens News Network, FA 1389991 (Nat. Arb. Forum June 30, 2011) (finding that complainant had established Policy ¶ 4(a)(i) rights in its mark through its trademark registrations with the USPTO and CIPO); see also Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <statefarmcarrentals.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that Respondent’s <statefarmcarrentals.com> domain name features Complainant’s STATE FARM mark in its entirety with the addition of a generic top-level domain (“gTLD”). Adding the gTLD “.com” is irrelevant to a confusingly similar analysis under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel also notes that Respondent’s <statefarmcarrentals.com> domain name adds the words “car” and “rentals” to Complainant’s STATE FARM mark. Adding generic words to a complainant’s mark does not distinguish a domain; it may still be confusingly similar under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Finally, the Panel notes that Respondent removed the space between Complainant’s STATE FARM mark. Removing a space in a complainant’s mark does not sufficiently differentiate a disputed domain name from the registered mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <statefarmcarrentals.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <statefarmcarrentals.com> domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent is not commonly known by the disputed domain name because Respondent is not associated with or affiliated with Complainant. Complainant maintains that it did not authorize Respondent to register the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “James Schwehr” or “Affinity Luxury Car Rentals.” Previous panels have found that a respondent is not commonly known by a domain name where no evidence on the record, including the WHOIS information, indicates a relationship between the two. 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). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has no rights to or legitimate interests in the disputed domain name under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant urges that Respondent’s disputed domain name resolves to a parked web page containing click-through ads for products and services in direct competition with Complainant. The Panel notes that Exhibit 3 displays the website that resolves from the disputed domain name. The Panel notes that some links include, “Economy Car Rentals,” “Cheapest Car Insurance,” “$19 for Car Insurance,” “AARP-Official Site,” “Alamo Official Site,” “Allstate Auto Insurance,” “Maui Car Rentals OGG,” “$27 Home Insurance,” “Car Rentals From $8/Day,” and “Self Directed IRA Secrets.” Using a confusingly similar domain name to resolve to a website featuring links and advertisements that compete with Complainant is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use of a disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and used the disputed domain name in bad faith. Complainant maintains that Respondent’s use constitutes a disruption of Complainant’s business. Complainant submitted Exhibit 3, which shows that the resolving page at issue includes links to: “Economy Car Rentals,” “Cheapest Car Insurance,” “$19 for Car Insurance,” “AARP-Official Site,” “Alamo Official Site,” “Allstate Auto Insurance,” “Maui Car Rentals OGG,” “$27 Home Insurance,” “Car Rentals From $8/Day,” and “Self Directed IRA Secrets.” Complainant’s business includes services in the insurance and financial industries. Disruption occurs when a disputed domain name resolves to a page that offers links to competitors of a Complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii) because the links offered through the disputed domain name are directed to competitors of Complainant in the insurance field.
Further, Complainant argues that Respondent uses a confusingly similar domain name to attract individuals seeking information about Complainant, thus creating confusion as to the source or sponsorship of Respondent’s website. Further, Complainant presumes that Respondent generates click-through fees from the links, which compete with Complainant in the insurance industry. Previous panels have attributed the content of a domain name back to the respondent even if the site is operated by a domain parking service provider. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Because Respondent is ultimately responsible for the content on the resolving page, the Panel attributes the content on the domain name’s website to Respondent. Complainant’s Exhibit 3 shows that the resolving page includes links to other insurances providers including AARP, Alamo, and Allstate. Previous panels have found evidence of bad faith under similar circumstances. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003), (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”; see also 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). Therefore, the Panel finds that Respondent registered and used the domain name at issue in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent was aware of Complainant and the STATE FARM mark when Respondent registered the disputed domain name. Previous panels have found that the respondent acted in bad faith where they had actual knowledge of the complainant’s right in the mark at the time the disputed domain name was registered. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). The evidence permits this Panel to make an inference that Respondent had actual knowledge of Complainant’s rights in the STATE FARM mark given the well-known nature of Complainant’s mark and the insurance-related content Respondent makes available on the resolving page. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; 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 <statefarmcarrentals.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Date: December 19, 2013
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