State Farm Mutual Automobile Insurance Company v. Joe Villa c/o Stem Cell Capital Inc.
Claim Number: FA1311001530548
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Joe Villa c/o Stem Cell Capital Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmpropertyclaims.com>, <statefarminsuranceclaims.info>, <statefarmpropertyclaims.net>, <statefarmpropertyclaims.info>, and <statefarminsuranceclaims.net>, registered with Godaddy.Com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2013; the National Arbitration Forum received payment on November 19, 2013.
On November 19, 2013, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmpropertyclaims.com>, <statefarminsuranceclaims.info>, <statefarmpropertyclaims.net>, <statefarmpropertyclaims.info>, and <statefarminsuranceclaims.net> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc 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 November 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@statefarmpropertyclaims.com, postmaster@statefarminsuranceclaims.info, postmaster@statefarmpropertyclaims.net, postmaster@statefarmpropertyclaims.info, postmaster@statefarminsuranceclaims.net. Also on November 25, 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 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
State Farm Trademark Rights to the Name “State Farm” and “State Farm Insurance”
State Farm is a nationally known company that has been doing business under the name “State Farm” since 1930. In 1999 State Farm opened a Federally Chartered Bank known as State Farm Bank. State Farm engages in business in both the insurance and the financial services industry. State Farm also has established a nationally recognized presence on televised and other media.
State Farm first began using the “State Farm” trademark in 1930 and registered it with the Patent and Trademark Office on June 11, 1996 and registered “State Farm Insurance” on September 11, 1979. State Farm has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm” including, but not limited to,:
the State Farm Insurance 3 oval logo; State Farm, State Farm Bank, State Farm Bank logo, State Farm Bayou Classic, State Farm Catastrophe Services, State Farm Companies Foundation, State Farm Mutual Funds, State Farm Dollars, State Farm Green Space, State Farm Red Magazine
In Canada State Farm has registered the State Farm 3 oval logo; State Farm; State Farm Companies Foundation; State Farm Insurance, StateFarm.com, StateFarm.ca, and others. In the European Community State Farm and the State Farm 3 oval logo is registered. In Mexico the State Farm 3 oval logo, State Farm and State Farm Insurance are registered. (See Attachment 1 for copies of registrations). The domain names registered by the Respondent incorporate the State Farm registered trademark, “State Farm” and are confusingly similar to State Farm registered marks.
For over 70 years State Farm has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.
State Farm on the Internet
State Farm developed its Internet web presence in 1995 using the domain name statefarm.com. At its web site, State Farm offers detailed information relating to a variety of topics that include its insurance and financial service products, consumer information, and information about its independent contractor agents. State Farm has expanded substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.
Conduct on Part of Respondent
In June of 2013 it was brought to the attention of State Farm that Complainant’s trademark "State Farm" had been registered as part of the domain names “StateFarmPropertyClaims.com et al.” In August “StateFarmPropertyClaims.info”, “StateFarmPropertyClaims.net”, “StateFarmInsuranceClaims.net” and “StateFarmInsuranceClaims.info” were brought to the Complainant’s attention. The domain names resolve to parked web pages containing click-through ads for various products and services in direct competition to the Complainant, and which are provided by GoDaddy.com.
On June 13, 2013, a cease and desist letter was sent by Complainant’s Intellectual Property Administrator via email to Respondent at stemcellcapital@yahoo.com. On August 30, 2013, another cease and desist letter was sent to the Respondent via email; however, there was no response from the Respondent. On October 16, 2013 a cease and desist letter was sent, along with a draft arbitration complaint.
Respondent Has No Legitimate Interest in the Domain Names
Because of State Farm’s substantial efforts, the public associates the phrase “State Farm” with the owner of the servicemark “State Farm.” The State Farm mark is distinctive and has acquired secondary meaning. The domain names at issue are confusingly similar to the State Farm servicemark that it has been using since 1930 and to other State Farm registered marks. Moreover, the domain names are confusingly similar to products, services or information that State Farm offers generally to the public as well as on its web sites.
The Respondent has no right or legitimate interest in the disputed domain names. The Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the servicemark "State Farm." State Farm did not authorize the Respondent to register the domain names or to use the State Farm trademark for the Respondent’s business purposes.
Respondent is not commonly known under the domain names “StateFarmPropertyClaims.info”, “StateFarmPropertyClaims.net”, “StateFarmInsuranceClaims.info”, “StateFarmInsuranceClaims.net”, or “StateFarmPropertyClaims.com.” It is believed that the Respondent has never been known by or performed business under the domain names at issue. The Respondent does not possess independent intellectual property rights in the names. In addition, State Farm does not have a contractual arrangement with Respondent that would allow them to offer services under the State Farm name.
State Farm believes that the Respondent registered the names to create the impression of association with State Farm, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about State Farm.
Respondent Has Acted in Bad Faith
It is clear that the names registered by Respondent are confusingly similar to State Farm trademarks. Indeed, the names include the State Farm registered mark "State Farm.” These domains are clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the sites.
State Farm has filed numerous complaints relating to its domain names under the ICANN Uniform Dispute Resolution Process. The arbitrators have consistently found that the use of a State Farm trademark in a domain name, whether or not additional language, characters or hyphens are added to the State Farm name, is confusingly similar to State Farm trademarks and that such registrations have been done in bad faith. (See State Farm Mut. Auto. Ins. Co. v. Advisory Services, Inc., FA94662 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. Bulldog, Inc., FA94427 (Nat. Arb. Forum, May 27, 2000), State Farm Mut. Auto. Ins. Co. v. I & B, FA94719 (Nat. Arb. Forum June 8, 2000), State Farm Mut. Auto. Ins. Co. v. JIT Consulting, FA94335 (Nat. Arb. Forum April 24, 2000), State Farm Mut. Auto. Ins. Co. v. Life en Theos, FA94663 (Nat. Arb. Forum June 1, 2000), State Farm Mut. Auto. Ins. Co. v. Try Harder & Company, FA94730 (Nat. Arb. Forum June 15, 2000), State Farm Mut. Auto. Ins. Co. v. J & B, Inc., FA94802 (Nat. Arb. Forum June 13, 2000), State Farm Mut. Auto. Ins. Co. v. Richard Pierce, FA94808 (Nat. Arb. Forum June 6, 2000), State Farm Mut. Auto. Ins. Co. v. HPR, FA94829 (Nat. Arb. Forum June 22, 2000), State Farm Mut. Auto. Ins. Co. v. Dean Gagnon, FA0710001087389 (Nat. Arb. Forum, November 16, 2007), State Farm Mut. Auto. Ins. Co. v. Jung Tae Young, FAFA0710001087458 (Nat. Arb. Forum, November 20, 2007), State Farm Mut. Auto. Ins. Co. v. Richard Pompilio, FAFA0710001092410 (Nat. Arb. Forum, November 20, 2007). (Decisions can be viewed at www.icann.org)
As in the cases above, Respondent has no legitimate claim in the domain names at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the names in bad faith.
In accordance with 15 U.S.C. §1125(d) Respondent’s registration of the disputed domain names was in bad faith in that:
a) Respondent has never been known by the name “State Farm.” The Respondent has never traded under the name “State Farm.” Respondent has not acquired a trademark or other intellectual property rights in the domain names in question. Moreover, Respondent has not registered the names in question with the Secretary of State in the state in which it does business or filed incorporation papers with respect to the same. This obvious lack of right to use the names in question shows bad faith registration and use.
b) Despite having registered the domain names “StateFarmPropertyClaims.info”, “StateFarmPropertyClaims.net”, “StateFarmInsuranceClaims.info”, “StateFarmInsuranceClaims.net”, and “StateFarmPropertyClaims.com,” respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor agent of State Farm. Registering domain names for products and services that it does not have authority to offer, shows that the Respondent has acted in bad faith.
c) While the Respondent registered the domain names “StateFarmPropertyClaims.info”, “StateFarmPropertyClaims.net”, “StateFarmInsuranceClaims.info”, “StateFarmInsuranceClaims.net”, and “StateFarmPropertyClaims.com,” giving the impression that interested individuals will receive information regarding State Farm, the fact is individuals are sent to parked web pages containing click-through ads for various products and services in direct competition to the Complainant, and which are provided by GoDaddy.com. The use of a trademark to generate business in other fashions reflects that the Respondent has acted in bad faith.
d) The Respondent is not using, nor are there any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. As of the date of this Complaint, there was no legitimate content associated with the names and no demonstrable indication that legitimate content would be forthcoming. Even if the Respondent did put information on its websites, their content along with the proposed domain names, would be in direct conflict with information State Farm already provides and would cause confusion to potential customers. Failure to resolve the domain names to legitimate content indicates that the Respondent has no legitimate reason for having registered the names and demonstrates that it has registered and is using the names in bad faith.
See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c )(i); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c )(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
e) Respondent has been sent Complainant’s cease and desist letter for notification of Respondent’s unauthorized use of the names in question. Failure to respond with legitimate information for use or intention to use the names and then failure to comply with Complainant’s cease and desist request demonstrates it has registered and is using the names in bad faith.
f) Respondent’s multiple registrations of this famous mark without permission demonstrates bad faith intent to use the marks of others for commercial gain or to inappropriately use the good will associated with the registered marks. This is bad faith registration and use of internet domain names.
g) Respondent’s registrations of this famous mark after receiving cease and desist information demonstrates it has registered and is using the names in bad faith.
h) Respondent’s use of the, “StateFarmPropertyClaims.info”, “StateFarmPropertyClaims.net”, “StateFarmInsuranceClaims.info”, “StateFarmInsuranceClaims.net”, and “StateFarmPropertyClaims.com,” domain names constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
j) The Respondent registered “StateFarmInsuranceClaims.info”, and “StateFarmPropertyClaims.com on May 19, 2013. The Respondent registered “StateFarmPropertyClaims.net” and “StateFarmInsuranceClaims.net” on August 10, 2013. The Respondent registered “StateFarmInsuranceClaim.us”, “StateFarmPropertyClaims.info”, and “” on August 11, 2013. State Farm registered its domain name “statefarm.com” on May 24, 1995. The Respondent knew or should have known of Complainant’s long-term use of the trademark “State Farm,” “State Farm Insurance” and the long-term use of the domain name “statefarm.com.” The Respondent’s registration of the domain names was intended to be in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 must prove three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant uses its STATE FARM and STATE FARM INSURANCE marks in connection with its business in both the financial and insurance services sectors. Complainant has gained rights in both the STATE FARM (e.g., Reg. No. 1,979,585 registered June 11, 1996) and STATE FARM INSURANCE (e.g., Reg. No. 1,121,010 registered September 11, 1979) marks, both of which have been registered with the United States Patent & Trademark Office (“USPTO”). A complainant’s registration of a mark with the USPTO is normally sufficient to establish the complainant’s rights in the mark under Policy ¶4(a)(i). See, e.g., Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, Complainant has adequately established it owns rights in both the STATE FARM and STATE FARM INSURANCE marks pursuant to Policy ¶4(a)(i).
Complainant claims the disputed domain names are confusingly similar to its STATE FARM or STATE FARM INSURANCE marks. Each of the <statefarmpropertyclaims.com>, <statefarmpropertyclaims.net>, and <statefarmpropertyclaims.info> domain names fully incorporates Complainant’s STATE FARM mark and adds a generic top-level domain (“gTLD”) as well as the phrase “property claims.” These disputed domain names eliminate the space found between words in the STATE FARM mark. Since domain names cannot contain spaces and must contain either a gTLD or ccTLD, these items must be disregarded when determining if a domain name is confusingly similar to a mark under Policy ¶4(a)(i). See, e.g., 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)). In Churchill Ins. Co. Ltd. v. Sutherland FA 1328073 (Nat. Arb. Forum July 13, 2010), a previous panel held the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, reasoning that the “alteration of [c]omplainant’s mark with the addition of a phrase comprised of terms descriptive of [c]omplainant’s business fails to create a distinct domain name that avoids confusing similarity.” The added phrase “property claims” is descriptive of services or processes involved in the insurance services provided by Complainant under its STATE FARM mark. Therefore, the Panel finds <statefarmpropertyclaims.com>, <statefarmpropertyclaims.net>, and <statefarmpropertyclaims.info> domain names’ addition of the phrase “propertyclaims” does not sufficiently distinguish these domain names from Complainant’s STATE FARM mark. The <statefarmpropertyclaims.com>, <statefarmpropertyclaims.net>, and <statefarmpropertyclaims.info> domain names are confusingly similar to Complainant’s STATE FARM mark under Policy ¶4(a)(i).
Each of the <statefarminsuranceclaims.info> and <statefarminsuranceclaims.net> domain names fully incorporate Complainant’s STATE FARM INSURANCE mark and add a gTLD as well as the term “claims.” These domain names eliminate the spaces found between the words in Complainant’s STATE FARM INSURANCE mark, which are not permitted characters in domain names. A domain name’s elimination of a space found between words in a mark and its addition of a gTLD are not changes that sufficiently distinguish the domain name from a complainant’s mark under Policy ¶4(a)(i). See, e.g., Bond & Co. Jewelers, supra (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 elimination of the spaces found in the STATE FARM INSURANCE mark and the addition of the gTLD “.info” or “.net” do not sufficiently distinguish the <statefarminsuranceclaims.info> and <statefarminsuranceclaims.net> domain names from Complainant’s STATE FARM INSURANCE mark. A disputed domain name is confusingly similar to a complainant’s mark where the disputed domain name fully appropriates the mark and merely adds a term that is descriptive of the complainant’s products or services (such as “claims” in this case). See, e.g., Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel holds the <statefarminsuranceclaims.info> and <statefarminsuranceclaims.net> domain names are confusingly similar to Complainant’s STATE FARM INSURANCE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Respondent is not commonly known as <statefarmpropertyclaims.com>, <statefarminsuranceclaims.info>, <statefarmpropertyclaims.net>, <statefarmpropertyclaims.info>, or <statefarminsuranceclaims.net> pursuant to Policy ¶4(c)(ii). A respondent is not commonly known by disputed domain names under Policy ¶4(c)(ii) where there is no evidence in the record, including the WHOIS information, to indicate otherwise. See, e.g., Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The WHOIS information identifies “Joe Villa c/o Stem Cell Capital Inc” as the registrant of the disputed domain names. Nothing else in the record suggests Respondent is commonly known by any name that approximates Complainant’s STATE FARM or STATE FARM INSURANCE mark. Respondent is commonly known as “Joe Villa c/o Stem Cell Capital Inc,” and is not commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii).
The disputed domain names resolve to parked websites that host a variety of click-through hyperlinks, including links to third-party websites that directly compete with Complainant. According to screenshots submitted by Complainant, the disputed domain names’ resolving websites promote numerous links to third-party websites, some of which appear to relate to Complainant’s insurance business, including the links entitled “Renters Insurance -$4/mo,” “GEICO Auto Insurance,” “Auto Insurance Quotes,” “Gateway Insurance,” and “Allstate Auto Insurance.” The use of a disputed domain name to promote links to various third parties, including third parties that directly compete with Complainant does not constitute 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). A respondent is responsible for the use of a disputed domain name even where the disputed domain name has been parked. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). The use of <statefarmpropertyclaims.com>, <statefarminsuranceclaims.info>, <statefarmpropertyclaims.net>, <statefarmpropertyclaims.info>, and <statefarminsuranceclaims.net> domain names to promote links to both non-competing and competing third parties does not constitute 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated bad faith attraction for commercial gain pursuant to Policy ¶4(b)(iv) because the disputed domain names create a likelihood of confusion with Complainant’s STATE FARM and STATE FARM INSURANCE marks and Respondent is commercially profiting from this confusion in the form of click-through fees. A respondent demonstrates bad faith under Policy ¶4(b)(iv) where the disputed domain name is “obviously connected” with the complainant’s mark and is used for the respondent’s commercial gain. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Each of the <statefarmpropertyclaims.com>, <statefarminsuranceclaims.info>, <statefarmpropertyclaims.net>, <statefarmpropertyclaims.info>, and <statefarminsuranceclaims.net> domain names is obviously connected to Complainant’s STATE FARM or STATE FARM INSURANCE mark because each domain name fully incorporates one of these marks. A respondent is commercially benefitting from its use of a disputed domain name where the domain name is used to promote hyperlinks to various third parties (even if it is in the form of free hosting). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). In the absence of evidence to the contrary, a respondent is responsible for the content displayed on a disputed domain name’s resolving website. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”). According to the screenshots provided by Complainant, the disputed domain names resolve to parked websites that promote links to various third parties, including third parties that appear to compete with Complainant in the insurance industry. Respondent is responsible for the competing and non-competing links promoted on the at-issue websites. Respondent has thus demonstrated bad faith registration and use of the disputed domain names under Policy ¶4(b)(iv).
Finally, Complainant suggests Respondent has demonstrated bad faith registration and use of the statefarmpropertyclaims.com>, <statefarminsuranceclaims.info>, <statefarmpropertyclaims.net>, <statefarmpropertyclaims.info>, and <statefarminsuranceclaims.net> domain names under Policy ¶4(a)(iii), because Respondent registered these domain names with actual notice of Complainant’s rights in the STATE FARM and STATE FARM INSURANCE marks. The Panel is willing to find Respondent had actual notice of Complainant’s STATE FARM and STATE FARM INSURANCE marks because they are famous. However, there is no showing Respondent competes with Complainant. Therefore, this Panel does not find bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <statefarmpropertyclaims.com>, <statefarminsuranceclaims.info>, <statefarmpropertyclaims.net>, <statefarmpropertyclaims.info>, and <statefarminsuranceclaims.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 24, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page