State Farm Mutual Automobile Insurance
Company v. India Domain Law and Research Group
Claim Number: FA0501000397665
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is India Domain Law and Research Group (“Respondent”),
Kalian, P.O. Bhilowal, Hoshiarpur, Punjab 146104.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefarminsuranc.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 7, 2005.
On
January 7, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <statefarminsuranc.com> is registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of
the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 31, 2005 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@statefarminsuranc.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
February 9, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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." 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 <statefarminsuranc.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 <statefarminsuranc.com>
domain name.
3. Respondent registered and used the <statefarminsuranc.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
State Farm Mutual Automobile Insurance Company, is a nationally known company
that has been doing business under the STATE FARM mark since 1930. Complainant is in the business of both the
insurance and the financial services industries. Complainant does not allow unauthorized parties to use its marks
as part of their Internet domain names.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for variations of the STATE FARM mark, including a trademark
registration for the STATE FARM INSURANCE mark (Reg. No. 1,125,010, issued
September 11, 1979). Complainant has
also registered its STATE FARM marks in the European Community, Mexico, and
Canada.
Complainant
operates its website at the <statefarm.com> domain name, where it offers
detailed information relating to a variety of topics, including insurance and
financial service products, consumer information, and information about its
independent contractor agents.
Respondent
registered the <statefarminsuranc.com>
domain name on October 5, 2004.
Respondent uses the disputed domain name to redirect Internet users to a
search engine website that provides information about a variety of services,
including health and car insurance. The
website also provides links to numerous companies in the insurance
business.
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 established
rights in the STATE FARM INSURANCE mark through registration with the United
States Patent and Trademark office in addition to continuous use of the mark in
commerce for the past seventy-five years.
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).
The <statefarminsuranc.com> domain
name registered by Respondent is identical to Complainant’s STATE FARM
INSURANCE mark because the only difference between the mark and the domain name
is the omission of the letter “e.” The
omission of the letter “e” in misspelling “insurance” does not significantly distinguish the disputed domain name from
the mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July
13, 2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see
also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to Complainant's AMERICAN AIRLINES registered marks);
see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).
Moreover, the
addition of the generic top-level domain “.com” does not sufficiently
distinguish the disputed domain from Complainant’s mark. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’ is . . .
without legal significance since use of a gTLD is required of domain name
registrants"); see also Snow Fun,
Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the
domain name <termquote.com> is identical to Complainant’s TERMQUOTE
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the
disputed domain name. When the
Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it
has rights or legitimate interests. Due
to Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent lacks rights and legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by Complainant that Respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to Respondent to
demonstrate that such rights or legitimate interests do exist).
Additionally, if
Complainant makes a prima facie showing
and Respondent does not respond, the Panel may accept all reasonable inferences
and assertions in the Complaint as true.
See 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.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also Charles
Jourdan AG. V. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Respondent is
using the disputed domain name to redirect Internet users to a search engine
website that features links to various websites offering insurance related
services similar to those offered by Complainant. Respondent’s use of a domain name that is confusingly similar to
Complainant’s STATE FARM INSURANCE mark to redirect Internet users interested
in Complainant’s services to a website that offers a search engine and links to
various businesses similar to Complainant’s insurance business is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA
150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the
disputed domain name, a simple misspelling of Complainant’s mark, to divert
Internet users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8,
2000) (finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that use of Complainant’s mark “as a portal to suck surfers into
a site sponsored by Respondent hardly seems legitimate”).
Respondent has
not offered any proof, and there is no indication in the record suggesting that
Respondent is commonly known by the <statefarminsuranc.com>
domain name. Furthermore, Respondent
has neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that Respondent does not have rights in a domain name
when Respondent is not known by the mark); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
registration of a domain name that misspells Complainant’s well-known
registered mark suggests that Respondent knew of Complainant’s rights in the
STATE FARM INSURANCE mark. Furthermore,
Respondent is deemed to have constructive knowledge of Complainant’s mark due
to Complainant’s registration with the United States Patent and Trademark
Office. Thus, the Panel finds that
Respondent chose the <statefarminsuranc.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark. See 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. Jeff 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”); see also Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd.,
D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously
connected with the Complainants that the use or registration by anyone other
than Complainants suggests ‘opportunistic bad faith’”).
The Panel also
finds that Respondent’s use of a domain name that is a misspelled version of
complainant’s STATE FARM INSURANCE mark constitutes typosquatting and evidences
Respondent’s bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting is the intentional misspelling of words with intent
to intercept and siphon off traffic from its intended destination, by preying
on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”); see also Zone Labs, Inc. v.
Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (Respondent registered
and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶
4(a)(iii) because the name was merely a typosquatted version of Complainant’s
ZONEALARM mark.).
Furthermore,
Respondent registered a domain name containing Complainant’s well-known mark
and did so for Respondent’s commercial gain.
Respondent’s domain name diverts Internet users searching under
Complainant’s STATE FARM INSURANCE mark to Respondent’s commercial
website. The Panel infers that Complainant
receives click-through fees through the use of the domain name by diverting
Internet users searching for Complainant to Complainant’s competitors. The Panel finds that Respondent registered
and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also 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 <statefarminsuranc.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
February 23, 2005
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