State Farm Mutual Automobile Insurance
Company v. Unasi Management, Inc.
Claim
Number: FA0503000440325
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Unasi Management, Inc. (“Respondent”),
Galerias Alvear, Via Argentina 2, Ofincina #3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statefarmensurance.com>, <statefarmimsurance.com>,
<statefarminaurance.com>, <statefarminsirance.com>,
<statefarminsueance.com>, <statefarminsuramce.com>,
<statefarminsuranca.com>, <statefarminsuranci.com>,
<statefarminsurancw.com>, <statefarminsuranxe.com>,
<statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com>, <statefarninsurance.com> and
<astatefarm.com>, registered with Iholdings.com, Inc. d/b/a
Dotregistrar.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 16, 2005.
On
March 16, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <statefarmensurance.com>,
<statefarmimsurance.com>, <statefarminaurance.com>,
<statefarminsirance.com>, <statefarminsueance.com>,
<statefarminsuramce.com>, <statefarminsuranca.com>,
<statefarminsuranci.com>, <statefarminsurancw.com>,
<statefarminsuranxe.com>, <statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com>, <statefarninsurance.com> and
<astatefarm.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 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 11, 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@statefarmensurance.com, postmaster
@statefarmimsurance.com, postmaster@statefarminaurance.com,
postmaster@statefarminsirance.com, postmaster@statefarminsueance.com,
postmater@statefarminsuramce.com, postmaster@statefarminsuranca.com,
postmaster@statefarminsuranci.com, postmaster@statefarminsurancw.com,
postmaster@statefarminsuranxe.com, postmaster@statefarminsurnce.org,
postmaster@statefarminsuronce.com, postmaster@statefarminzurance.com,
postmaster@statefarmnsurance.com, postmaster@statefarmonsurance.com,
postmaster@statefarmunsurance.com, postmaster@statefarninsurance.com and
postmaster@astatefarm.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 18, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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 <statefarmensurance.com>,
<statefarmimsurance.com>, <statefarminaurance.com>,
<statefarminsirance.com>, <statefarminsueance.com>,
<statefarminsuramce.com>, <statefarminsuranca.com>,
<statefarminsuranci.com>, <statefarminsurancw.com>,
<statefarminsuranxe.com>, <statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com>, <statefarninsurance.com> and
<astatefarm.com> domain names are confusingly similar to
Complainant’s STATE FARM and STATE FARM INSURANCE marks.
2. Respondent does not have any rights or
legitimate interests in the <statefarmensurance.com>,
<statefarmimsurance.com>, <statefarminaurance.com>,
<statefarminsirance.com>, <statefarminsueance.com>,
<statefarminsuramce.com>, <statefarminsuranca.com>,
<statefarminsuranci.com>, <statefarminsurancw.com>,
<statefarminsuranxe.com>, <statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com>, <statefarninsurance.com> and
<astatefarm.com> domain names.
3. Respondent registered and used the <statefarmensurance.com>,
<statefarmimsurance.com>, <statefarminaurance.com>,
<statefarminsirance.com>, <statefarminsueance.com>,
<statefarminsuramce.com>, <statefarminsuranca.com>,
<statefarminsuranci.com>, <statefarminsurancw.com>,
<statefarminsuranxe.com>, <statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com>, <statefarninsurance.com> and
<astatefarm.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 and STATE FARM INSURANCE
marks since 1930. Complainant uses the
STATE FARM and STATE FARM INSURANCE marks in connection with offering insurance
and banking-related products and services.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the STATE FARM and STATE FARM INSURANCE marks (Reg. No.
645,890, issued May 21, 1957 and Reg. No. 1,087,834, issued Mar. 21,
1978). Complainant has also owns
trademark registrations for the STATE FARM and STATE FARM INSURANCE marks in
Canada, the European Community and Mexico. (Reg. No. 405,034, issued November
20, 1992 in Canada and Reg. No. 000,175,844, issued June 18, 1998 in Mexico).
Respondent
registered the <astatefarm.com> domain name on February 4, 2005
and the <statefarmensurance.com>, <statefarmimsurance.com>,
<statefarminaurance.com>, <statefarminsirance.com>,
<statefarminsueance.com>, <statefarminsuramce.com>,
<statefarminsuranca.com>, <statefarminsuranci.com>,
<statefarminsurancw.com>, <statefarminsuranxe.com>,
<statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com> and <statefarninsurance.com>
domain names on March 6, 2005.
Respondent is using the disputed domain names to redirect Internet users
to a search engine website where Internet users are provided various links to
different third party websites offering
services such as car insurance, insurance quotes and a link for an unauthorized
website offering information about Complainant’s company.
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 and STATE FARM INSURANCE marks
through registration with the United States Patent and Trademark Office and
through continuous use of its mark in commerce for the last seventy 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 <statefarmensurance.com>,
<statefarmimsurance.com>, <statefarminaurance.com>,
<statefarminsirance.com>, <statefarminsueance.com>,
<statefarminsuramce.com>, <statefarminsuranca.com>,
<statefarminsuranci.com>, <statefarminsurancw.com>,
<statefarminsuranxe.com>, <statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com> and <statefarninsurance.com>
domain names registered by Respondent are confusingly similar to Complainant’s
STATE FARM INSURANCE mark because the domain names all consist of misspelled
versions of Complainant’s mark, namely, the misspelling of the word “insurance”
in the domain names. The Panel finds
that Respondent’s registration of domain names consisting of typographically
erroneous versions of Complainant’s mark does not negate the confusing
similarity of the domain names with Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s 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); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30,
2000) (finding the domain name <hewlitpackard.com> to be identical or
confusingly similar to Complainant’s HEWLETT-PACKARD mark).
Additionally,
Respondent’s <astatefarm.com> domain name is confusingly similar
to Complainant’s STATE FARM mark because the addition of the letter “a” does
not sufficiently distinguish the domain name from Complainant’s STATE FARM
mark. See Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com>
are confusingly similar to Complainant’s mark ICQ); see also Am. Online, Inc. v. iDomainNames.com, FA
93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name
<go2AOL.com> was confusingly similar to Complainant’s AOL mark).
Furthermore,
the addition of the generic top-level domain “.com” is irrelevant in
determining whether the disputed domain names are confusingly similar to
Complainant’s STATE FARM and STATE FARM INSURANCE marks. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO
is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed domain
name. 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 name. 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 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); see also 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 interests in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of the Complaint to be deemed true); 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).
Respondent is
using the disputed domain names to redirect Internet users to a search engine
website where Internet users are provided with various links to different third
party websites offering services such as car insurance, insurance quotes and a
false link for a website offering information about Complainant’s company that
is false and misleading. The Panel
assumes that Respondent receives click-through fees in return for linking third
party websites to the disputed domain names.
Respondent’s use of domain names that are confusingly similar to
Complainant’s STATE FARM and STATE FARM INSURANCE marks to redirect Internet
users interested in Complainant’s services to a search engine website that
offers links to competing websites is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan,
FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have
rights or legitimate interests in a domain name that used Complainant’s mark
and redirected Internet users to a website that pays domain name registrants
for referring those users to its search engine and pop-up advertisements); see
also eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that
the "use of complainant’s entire mark in infringing domain names makes it
difficult to infer a legitimate use"); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Moreover, Respondent
is not commonly known by the disputed domain names, and has never been known to
operate any businesses under the domain names.
Respondent has not presented any evidence and there is no proof in the
record suggesting that Respondent is commonly known by the disputed domain
names. Therefore, 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 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
incorporated Complainant’s marks in its domain names to lead Internet users to
a website that offers links to competing websites that offer banking and
insurance-related services. Respondent
presumably received click-through fees from these third party companies. The Panel finds that Respondent is intentionally
creating a likelihood of confusion with Complainant’s mark to attract Internet
users to Respondent’s website for Respondent’s commercial gain, pursuant to
Policy ¶ 4(b)(iv). See Kmart v. Kahn,
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 Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where Respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that Complainant is the source of or is sponsoring the
services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and
registration by linking the domain name to a website that offers services
similar to Complainant’s services, intentionally attempting to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s marks).
Moreover,
Respondent registered the confusingly similar domain names for the purpose of
disrupting Complainant’s business by redirecting Internet traffic intended for
Complainant to a hub for competing websites offering similar banking and
insurance-related services.
Registration of domain names confusingly similar to a Complainant’s mark
for the purpose of disrupting Complainant’s business is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA
96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were
registered and used in bad faith where Respondent and Complainant were in the
same line of business in the same market area); 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 finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be granted.
Accordingly, it
is Ordered that the <statefarmensurance.com>,
<statefarmimsurance.com>, <statefarminaurance.com>,
<statefarminsirance.com>, <statefarminsueance.com>,
<statefarminsuramce.com>, <statefarminsuranca.com>,
<statefarminsuranci.com>, <statefarminsurancw.com>,
<statefarminsuranxe.com>, <statefarminsurnce.org>, <statefarminsuronce.com>,
<statefarminzurance.com>, <statefarmnsurance.com>, <statefarmonsurance.com>,
<statefarmunsurance.com>, <statefarninsurance.com> and
<astatefarm.com> domain names be TRANSFERRED from Respondent
to Complainant.
Louis E. Condon, Panelist
Dated:
April 29, 2005
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