State Farm Mutual Automobile Insurance
Company v. Unasi Management, Inc.
Claim
Number: FA0503000441054
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, Oficina #3, Zona 5, Panama 5235.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statwfarm.com> and <statefarminsurnce.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically March
15, 2005; the National Arbitration Forum received a hard copy of the Complaint 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 <statwfarm.com>
and <statefarminsurnce.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 verified that Respondent
is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration
agreement and thereby has 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 23, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of April
12, 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@statwfarm.com and postmaster@statefarminsurnce.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 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain names that Respondent
registered, <statwfarm.com> and <statefarminsurnce.com>,
are confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE
marks.
2. Respondent has no rights to or legitimate
interests in the <statwfarm.com> and <statefarminsurnce.com>
domain names.
3. Respondent registered and used the <statwfarm.com>
and <statefarminsurnce.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
registered the STATE FARM service mark with the U.S. Patent and Trademark
Office (“PTO”) June 11, 1996 (Reg. No. 1,979,585). According to the PTO printout, Complainant has used the STATE
FARM mark in connection with “underwriting
and servicing auto, homeowners, life and fire insurance” since
1930.
Complainant also
registered the STATE FARM INSURANCE
service mark with the PTO September 11, 1979 (Reg. No. 1,125,010). According to the PTO printout, Complainant
has used the STATE FARM INSURANCE mark in connection with “underwriting life, casualty and fire insurance”
since 1930.
Respondent
registered the <statwfarm.com> domain name December 13, 2004. The domain name resolves to a generic search
engine website, which contains a miscellaneous assortment of “Sponsored Links.”
Respondent
registered the <statefarminsurnce.com> domain name February 28,
2005. The domain name resolves to a
generic search engine website, which contains links to “Popular Categories,”
including “Low Cost 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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 with extrinsic proof in this proceeding a presumption of rights in
the STATE FARM and STATE FARM INSURANCE marks as the result of registering the
marks with the U.S. Patent and Trademark Office. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
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); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office creates
a presumption of rights in a mark).
A domain name that contains a
third-party mark, which simply replaces or removes a single letter from the
third-party mark, has been consistently found to be confusingly similar to the
mark pursuant to Policy ¶ 4(a)(i). See Guinness UDV North Am.,
Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (Finding that the removal of the
final letter "f" from Complainant's SMIRNOFF mark, referred to
as "typo-piracy," failed to remove the confusing
similarity that such a misspelling gives rise to.); see also Marcus
Group, Inc. v. Party Night, Inc., FA
114546 (Nat. Arb. Forum July 23, 2002) ("Respondent's
<neimanmacus.com> domain name represents a simple misspelling of
Complainant's NEIMAN MARCUS mark. Respondent's domain name is a classic example
of typosquatting, the process of registering a common misspelled version of a
famous mark in a domain name. It has been consistently held that
typosquatting renders the domain name confusingly similar to the altered
famous mark.").
In the instant case, the
domain name, <statwfarm.com>, contains Complainant’s STATE FARM mark,
but has simply replaced the letter “e,” with the letter “w.” Moreover, the domain name, <statefarminsurnce.com>,
contains Complainant’s STATE FARM INSURANCE mark, but has simply removed the
letter “a” from the term “insurance.”
Therefore, consistent with prior decisions under the Policy, the Panel
finds that the disputed domain names are confusingly similar to Complainant’s
marks because both names simply replace or remove a single letter ordinarily
found in Complainant’s marks.
Complainant has established
Policy ¶ 4(a)(i).
Complainant
established its rights and asserted that Respondent has no such rights to and
legitimate interests in the disputed domain names. Respondent failed to respond.
The failure to respond to a complaint has been construed as substantive
evidence that a respondent, in fact, lacks rights and legitimate interests in a
domain name. The Panel finds
accordingly. See 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); 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 interest
in the domain names).
Using a domain
name that is confusingly similar to a third-party’s mark to divert Internet
users to a website that contains a generic search engine, advertisements and/or
sponsored links has been found not to evidence a bona fide offering of
goods or services and it is not a legitimate noncommercial or fair use under
Policy ¶¶ 4(c)(i) and (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 advertisements); see also Trans Global Tours, LLC v. Li, FA
196166 (Nat. Arb. Forum Nov. 1, 2003) (“Respondent is using the disputed domain name to divert Internet
users to an Internet search engine with pop-up advertisements. This type of use 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).”).
In the instant case, the <statwfarm.com>
domain name resolves to a generic search engine website that features a
variety of sponsored links. Consistent
with prior decisions under the Policy, the Panel finds that this use does not
evidence a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use under Policy ¶¶ 4(c)(i) and (iii).
Likewise, using
a domain name that is confusingly similar to a third-party’s mark to divert Internet
users to a website that offers links to goods or services that compete with
those offered under the third-party mark has been found not to evidence a bona
fide offering of goods or services or a legitimate noncommercial or fair
use under Policy ¶¶ 4(c)(i) and (iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services).
In the instant
case, the <statefarminsurnce.com> domain name resolves to a
generic search engine website that features a link to “Low Cost
Insurance.” Complainant’s STATE FARM
INSURANCE mark is used in connection with “underwriting
life, casualty and fire insurance.” Since
the resolved website links to the same type of services Complainant offers and
under Complainant’s mark, the Panel finds that the domain name is not being
used in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Moreover, the
Panel finds that Respondent is engaged in the practice of typosquatting. Typosquatting has been defined as “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.” Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003). Panels have consistently found that
typosquatting does not evidence rights or legitimate interests in domain
names. See Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”); see also IndyMac
Bank F.S.B. v. Ebeyer, FA
175292 (WIPO Sept. 19, 2003) (finding that Respondent lacked rights and
legitimate interests in the disputed domain names because it "engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter 'x' instead of the letter
'c.'"); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com> ,
<ltdcommmodities.com> and < ltdcommodaties.com> disputed domain
names were typosquatted versions of Complainant's LTD COMMODITIES mark and
"Respondent's 'typosquatting' is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.").
Typosquatting
is often prevalent in cases involving famous trademarks. Due to the widespread recognition of famous
marks, the typosquatter finds the advantages of famous trademarks more
attractive than lesser marks in furthering his unscrupulous ends. Such is the case here. In
prior decisions under the Policy, Panels have found the STATE FARM mark to be
famous and well known on several occasions.[1] Given the fame of
Complainant’s mark, it is reasonable to conclude that when Respondent
registered not one, but two domain names consisting of confusingly
similar variations of Complainant’s famous mark, Respondent was engaged in the
intentional and targeted endeavor to usurp Complainant’s rights in its famous
trademarks. Therefore the Panel
concludes that Respondent is engaged in the practice of typosquatting.
Additionally,
the record does not indicate that Respondent is commonly known by the disputed
domain names. Therefore, the Panel
finds that Respondent is not commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See 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"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Complainant has
established Policy ¶ 4(a)(ii).
Complainant
has used its STATE FARM marks since 1930.
Those marks have become famous.
The fact that Respondent registered not one but two domain names that
are confusingly similar to Complainant’s marks is strong evidence that
Respondent had actual knowledge of Complainant’s marks at the time of
registering the disputed domain names.
The registration of a domain name that incorporates a third-party trademark,
when the registrant knows of the third party’s rights in that mark prior to
registration, creates a “legal presumption of bad faith” registration and use,
barring an exception. See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”). In the absence of a response, the
presumption stands. Therefore, the
Panel concludes Respondent registered and used the disputed domain names in bad
faith, 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).
As previously
stated, Respondent is engaged in the practice of typosquatting. The practice of typosquatting has been found
to be evidence of bad faith registration and use under the Policy. Therefore, Respondent has evidenced its bad
faith registration and use of the disputed domain names. See Zone Labs,
Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that
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. "Typosquatting itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept.
22, 2003) (finding that the <dermatalogica.com> domain name was a
typosquatted version of Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii)."); see also K.R.
USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting, in which Respondent has engaged, has been deemed behavior in bad
faith.").
Respondent
registered two domain names that are confusingly similar to Complainant’s
famous marks and resolved those domain names to websites that featured
advertisements, sponsored links, and in the case of one domain name, a link to
a competitor’s website. These facts
indicate that Respondent is commercially gaining from the use of the domain names. Since Respondent had knowledge of
Complainant’s famous marks at the time of registering the domain names, the
Panel may conclude that Respondent had an intent to confuse Internet users. See Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 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"). Given the fame of Complainant’s marks and the confusing
similarity between those marks and the disputed domain names, Respondent
intended to create—and did create—a likelihood of confusion between the
disputed domain names and Complainant’s marks.
Therefore, the Panel concludes Respondent registered and used both
disputed domain names in violation of Policy ¶ 4(b)(iv). In the case of the <statefarminsurnce.com>
domain name, Respondent also registered and used the name in violation of
Policy ¶ 4(b)(iii). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using Complainant’s famous marks and likeness); 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 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).
Complainant
has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <statwfarm.com> and <statefarminsurnce.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 3, 2005
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National Arbitration Forum
[1] E.g., State Farm Mut. Auto. Ins. Co. v. Orloske, FA 105735 (Nat. Arb.
Forum Apr. 5, 2002) (“As the
result of over seventy years of use, and substantial financial investment in
marketing and promoting its mark, Complainant's STATE FARM mark has become a
famous mark in the United States.”); State Farm Mut. Auto. Ins.
Co. v. Miller, FA 105940 (Nat. Arb. Forum May 2, 2002) (“Complainant's [STATE FARM] mark is well known and Respondent has
offered no good faith explanation for registering a domain name that contains
Complainant's mark in its entirety. Further, in such circumstances,
Respondent's registration and use of the disputed domain name is considered bad
faith.”); State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum
Apr. 24, 2000) (“Complainant has widely
and continuously used the mark 'STATE FARM' as a nationally known insurance
company with policy holders in the United States and Canada. Through extensive
use STATE FARM has become a famous mark.”).