State Farm Mutual Automobile Insurance
Company v. Unasi Management, Inc.
Claim
Number: FA0503000449334
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 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 <statefarminsurnce.net> and <wstatefarm.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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 31, 2005.
On
April 1, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <statefarminsurnce.net>
and <wstatefarm.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
April 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 2, 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@statefarminsurnce.net and postmaster@wstatefarm.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
May 6, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <statefarminsurnce.net>
and <wstatefarm.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 <statefarminsurnce.net> and <wstatefarm.com>
domain names.
3. Respondent registered and used the <statefarminsurnce.net>
and <wstatefarm.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 is in the business of both the
insurance and the financial services industries.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for variations of the STATE FARM mark (e.g., Reg. No.
1,979,585 issued June 11, 1996).
Complainant also holds a trademark registration for the STATE FARM
INSURANCE mark (Reg. No. 1,125,010, issued September 11, 1979).
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 <statefarminsurnce.net> domain name on March 7,
2005 and the <wstatefarm.com> domain name on March 28, 2005. Respondent is using the disputed domain
names to redirect Internet users to a website that features links to various
websites offering insurance related services similar to those offered by
Complainant.
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 and STATE FARM INSURANCE marks through
registration with the United States Patent and Trademark office in addition to
continuous use of the marks in commerce.
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. The respondent has the burden of refuting
this assumption).
The <statefarminsurnce.com> domain
name registered by Respondent is confusingly similar to Complainant’s STATE
FARM INSURANCE mark because the only difference between the mark and the domain
name is the omission of the letter “a” from the word “insurance.” The omission of the letter “a” in
misspelling “insurance” does not distinguish the confusingly similar aspects of
the disputed domain name from 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 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 the 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 the complainant’s
STATE FARM mark).
Furthermore, the
addition of the generic top-level domains “.net” and “.com” does not distinguish
the disputed domain names from Complainant’s mark. See Little Six, Inc.
v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE
trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to the complainant’s famous NIKE
mark); see also Kabushiki Kaisha
Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that
the domain name <toshiba.net> is identical to the complainant’s trademark
TOSHIBA); see also 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 the complainant’s TERMQUOTE mark).
The <wstatefarm.com>
domain name is confusingly similar to Complainant’s STATE FARM mark because the
domain name incorporates Complainant’s mark in its entirety and merely adds a
“w” before the mark. The addition the
letter “w” to Complainant’s mark does not negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). 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 the complainant’s mark, ICQ); see also Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to the complainant’s federally registered service mark,
“Kelson”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <statefarminsurnce.net>
and <wstatefarm.com> domain names. 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 names.
See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the 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 the complainant that the
respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to the respondent to demonstrate that such rights or legitimate
interests do exist).
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 the 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 the respondent’s
failure to reply to the complaint).
Respondent is
using the disputed domain names to redirect Internet users to a website that
features links to various websites offering insurance related services similar
to those offered by Complainant.
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 website that offers 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
names pursuant to Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA
150406 (Nat. Arb. Forum April 5, 2003) (holding that the 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
the respondent attempted to profit using the 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 the complainant’s mark “as a portal to suck
surfers into a site sponsored by the 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 <statefarminsurnce.net> or <wstatefarm.com>
domain name. Furthermore, Respondent
has neither permission nor a license to use Complainant’s marks. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(a)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the 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 the
respondent was not commonly known by the mark and never applied for a license
or permission from the 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 the 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 domain names that misspell and add letters to Complainant’s
well-known registered mark, and the content of Respondent’s website suggest
that Respondent knew of Complainant’s rights in the STATE FARM and STATE FARM
INSURANCE marks. Furthermore,
Respondent is deemed to have actual or constructive knowledge of Complainant’s
marks due to Complainant’s registration with the United States Patent and
Trademark Office. Thus, the Panel finds
that Respondent chose the <statefarminsurnce.net> and <wstatefarm.com>
domain names 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. 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) (“[T]here 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 domain names that misspell and add letters to
Complainant’s STATE FARM and STATE FARM INSURANCE marks constitute
typosquatting and evidence Respondent’s bad faith registration and use of the
disputed domain names 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 domain names containing confusingly similar versions of
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 or STATE FARM INSURANCE marks to
Respondent’s commercial website. The
Panel infers that Complainant receives click-through fees through the use of
the domain names by diverting Internet users searching for Complainant to
Complainant’s competitors. The Panel
finds that Respondent registered and used the disputed domain names 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 the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the 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 the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
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 the respondent directed Internet users seeking the 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 <statefarminsurnce.net> and <wstatefarm.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
May 17, 2005
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