State Farm Mutual Automobile Insurance
Company v. Biad Corp a/k/a Nina Biad
Claim
Number: FA0410000348900
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented by Janice K. Forrest, One
State Farm Plaza A-3, Bloomington, IL 61710.
Respondent is Biad Corp. a/k/a Nina Biad, 1241 East
Captain Oreyfus, Phoenix, AZ 85022
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <allstatefarminsurance.com>, registered
with Enom, Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
22, 2004; the National Arbitration Forum received a hard copy of the Complaint
on October 22, 2004.
On
October 22, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <allstatefarminsurance.com> is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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
October 27, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 16, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@allstatefarminsurance.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 29, 2004 pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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." 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:
1. Respondent’s <allstatefarminsurance.com>
domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or
legitimate interests in the <allstatefarminsurance.com> domain
name.
3. Respondent registered and used the <allstatefarminsurance.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
is a nationally known company that has been doing business under the name
“State Farm” since 1930. Complainant
engages in business in both the insurance and financial services industry. Complainant registered the STATE FARM
INSURANCE mark with the U.S. Patent and Trademark Office (“USPTO”) on September
11, 1979 (Reg. No 1,125,010).
Respondent
registered the <allstatefarminsurance.com> domain name on December
5, 2003. The domain name resolves to a
search engine website.
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.
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 has
established that it has rights in the STATE FARM INSURANCE mark through
registration with the USPTO and through the continuous use of the mark in
commerce since 1930. See Men’s
Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s
disputed domain name is confusingly similar to Complainant’s STATE FARM
INSURANCE mark. But for the word “all,”
Respondent’s <allstatefarminsurance.com> domain name is identical
to the STATE FARM INSURANCE mark. The
addition of a generic or suggestive term, such as “all,” does not negate the
confusing similarity of Respondent’s domain name pursuance to Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also AXA
China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding
that common geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
Respondent uses
the disputed domain name to direct Internet traffic to a search engine
website. Since the resulting website
links to a variety of general subjects, the Panel infers that Respondent
profits from the traffic that is diverted to the search engine website. Moreover, since the disputed domain name
does not logically reference a search engine website, the Panel infers that
Respondent purposefully uses Complainant’s STATE FARM INSURANCE mark to
generate a profit. Respondent’s commercial
use of the disputed domain name does not constitute rights or legitimate
interests under Policy ¶¶ 4(c)(i) and (iii).
See Big Dog Holdings, Inc.
v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use
when Respondent was diverting consumers to its own website by using Complainant’s
trademarks); see also FAO Schwarz
v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or
legitimate interests in the domain names <faoscwartz.com>,
<foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com>
where Respondent was using these domain names to link to an advertising
website); see also Ziegenfelder
Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights
or legitimate interests based on the fact that the domain names bear no
relationship to the business of Respondent and that Respondent would only
legitimately choose to use Complainant’s mark in a domain name if Respondent
was seeking to create an impression that the two businesses were affiliated).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Since the
disputed domain name has no inherent connection to the use of the search engine
website, such evidence supports the Panel’s inference that Respondent
registered the disputed domain name to trade on the goodwill associated with
the STATE FARM INSURANCE mark.
Furthermore, the Panel infers that Respondent had actual or constructive
knowledge of Complainant’s mark because the mark was registered with the USPTO. Therefore, Respondent’s registration and use
of the disputed domain name, despite knowledge of Complainant’s interests in
the STATE FARM INSURANCE mark, constitutes bad faith pursuant to Policy ¶
4(a)(iii). See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
Furthermore,
Respondent is capitalizing on the goodwill of the STATE FARM INSURANCE mark by
using the disputed domain name to divert Internet users to a search engine
website. The Panel infers that
Respondent commercially benefits through use of the domain name. Since the disputed domain name contains entire
versions of Complainant’s mark and is used for something completely unrelated
to its descriptive quality, a consumer searching for Complainant would become
confused as to Complainant’s affiliation with the resulting search engine
website. Therefore, Respondent’s
opportunistic use of the disputed domain name represents bad faith registration
and use under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
The Panel finds
that 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 <allstatefarminsurance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 9, 2004