State Farm Mutual Automobile Insurance
Company v. J Lee
Claim
Number: FA0503000436815
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance
Company, One State Farm
Plaza A3, Bloomington, IL 61710.
Respondent is J Lee (“Respondent”), 18 Salisbury Road, Kowloon,
Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statefarminternational.com>, <jobsstatefarm.com>,
and <statefarmusa.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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 9, 2005.
On
March 11, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <statefarminternational.com>,
<jobsstatefarm.com>, and <statefarmusa.com> are registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the
current registrant of the names. 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
March 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 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@statefarminternational.com,
postmaster@jobsstatefarm.com, and postmaster@statefarmusa.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
April 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarminternational.com>,
<jobsstatefarm.com>, and <statefarmusa.com> domain
names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarminternational.com>, <jobsstatefarm.com>,
and <statefarmusa.com> domain names.
3. Respondent registered and used the <statefarminternational.com>,
<jobsstatefarm.com>, and <statefarmusa.com> domain
names 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 engages in business in both the
insurance and the financial services industry.
Complainant also has trademark rights for the STATE FARM mark through
registration with the United States Patent and Trademark Office (e.g., Reg. No.
1,979,585, issued June 11, 1996).
Additionally, Complainant possesses trademark registration rights in
Canada, the European Union and Mexico.
Respondent
registered the <statefarminternational.com>, <jobsstatefarm.com>,
and <statefarmusa.com> domain names on February 21, 2005, and is
using the domain names to re-route Internet users to a webpage which provides
links to websites that relate to the insurance business and deals primarily
with auto and car insurance. Each page also provides links that refer to State
Farm Insurance which lead to false and misleading information regarding State
Farm Insurance.
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
acquired rights in the STATE FARM mark through registration with the United
States Patent and Trademark Office and use in commerce since at least
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 <statefarminternational.com>,
<jobsstatefarm.com>, and <statefarmusa.com> domain names are confusingly similar to
Complainant’s STATE FARM mark because the domain names incorporate
Complainant’s mark in its entirety and differ only in the addition of the
descriptive or generic terms “international,” “jobs” and “usa.” The mere addition of generic or descriptive
terms does not negate the confusing similarity of Respondent’s domain names
pursuant 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 Pfizer, Inc. v. Papol Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that, because the subject domain name
incorporates the VIAGRA mark in its entirety, and deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to
Complainant’s mark); see also Yahoo!
Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration
and use of multiple domain names incorporating the distinctive and famous
YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as
‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and
likely to mislead Internet users into believing that products and services
offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities,
given the similarity of the names and products and services offered).
Furthermore, the addition of the geographic term “usa” to Complainant’s
STATE FARM mark does not remove Respondent’s <statefarmusa.com> domain name
from the realm of confusingly similar with respect to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall
SAGL, D2000-0666 (WIPO
Sept. 26, 2000) (finding that Respondent’s registration of the domain name
<net2phone-europe.com> is confusingly similar to Complainant’s mark…"the combination of a geographic term with
the mark does not prevent a domain name from being found confusingly
similar"); see also VeriSign,
Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing
similarity between Complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where
Respondent added the word “India” to Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been
satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <statefarminternational.com>,
<jobsstatefarm.com>, and <statefarmusa.com> domain
names. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the disputed domain names.
See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also 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
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Parfums Christian Dior v.
QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting
a Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Moreover, where
Respondent does not respond, the Panel may accept all reasonable allegations
and inferences 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 Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17,
2002) (finding that, in the absence of a Response, the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do).
Respondent is
using the <statefarminternational.com>, <jobsstatefarm.com>,
and <statefarmusa.com> domain names to redirect Internet users to
a webpage which provides links to websites that are in the insurance business
dealing primarily with auto and car insurance. Respondent’s use of
Complainant’s mark in the disputed domain names for commercial purposes 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 names pursuant to Policy ¶
4(c)(iii). See U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide
offering of goods or services); see
also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is
blank but for links to other websites, is not a legitimate use of the domain names);
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).
Respondent has
offered no evidence and no proof in the record suggests that Respondent is
commonly known by the <statefarminternational.com>, <jobsstatefarm.com>,
and <statefarmusa.com> domain names. Thus, Respondent has not established rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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 is
using the <statefarminternational.com>, <jobsstatefarm.com>,
and <statefarmusa.com> domain names, which are confusingly similar
to Complainant’s STATE FARM mark, to redirect Internet users to a webpage which
provides links to websites that relate to the insurance business and deal
primarily with auto and car insurance.
The Panel finds that such competing use constitutes disruption and is
evidence that Respondent registered and used the disputed domain names in bad
faith pursuant to Policy ¶ 4(b)(iii). See Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation of
Policy ¶ 4(b)(iii)); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding Respondent acted in bad faith by attracting Internet users to a
website that competes with Complainant’s business).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing insurance and financial services websites. Since Respondent’s domain names contain confusingly similar
versions of Complainant’s mark, consumers accessing Respondent’s domain names
may become confused as to Complainant’s affiliation with the resulting
website. Thus, the Panel finds that
Respondent’s commercial use of the disputed domain names constitutes bad faith
registration and use pursuant to 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 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.”).
Additionally,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the STATE FARM mark due to Complainant’s
registration of the marks with the United States Patent and Trademark Office and
long use of the mark in commerce.
Furthermore, the Panel infers that Respondent had actual knowledge of
Complainant’s rights in the mark due to the obvious connection between the
content featured on Respondent’s website and Complainant’s business. Registration of a domain name that is
confusingly similar to a mark, despite actual or constructive knowledge of
another’s rights in the mark, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). 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. 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that, because the link between Complainant’s mark and the
content advertised on Respondent’s website was obvious, Respondent “must have
known about the Complainant’s mark when it registered the subject domain
name”).
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 <statefarminternational.com>, <jobsstatefarm.com>,
and <statefarmusa.com> domain names be TRANSFERRED from
Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
April 21, 2005
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