State Farm Mutual Automobile Insurance
Company v. Zone MP3
Claim
Number: FA0507000523318
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington,
IL 61710. Respondent is Zone MP3 (“Respondent”), 14036 Parkland
Blvd, Calgary, AB, T2J3X5, CA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefarmsurance.com>, registered with Enom,
Inc.
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 July
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 3, 2005.
On
July 25, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the <statefarmsurance.com> domain name is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. 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
August 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 24,
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@statefarmsurance.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 30, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmsurance.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 <statefarmsurance.com> domain name.
3. Respondent registered and used the <statefarmsurance.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 name “State Farm” since 1930. Complainant engages in business in both the
insurance and the financial services industry.
Complainant began using the STATE FARM mark in 1930 and registered it
with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996
(Reg. No. 1,979,585). Complainant also
holds registration with the USPTO for its STATE FARM INSURANCE mark (Reg. No.
1,125,010 issued September 11, 1979).
For over 70 years, State Farm has expended substantial time, effort, and
funds to develop the goodwill associated with its name. Since 1995, Complainant has been using the
<statefarm.com> domain name to offer detailed information relating to a
variety of topics that include its insurance and financial service products,
consumer information, and information about its independent contractor agents.
On April 4,
2005, Respondent registered the <statefarmsurance.com> domain
name. The domain name resolves to a
website featuring various links to different sites regarding car insurance and
insurance companies in direct competition with Complainant. Additionally, the website posts insurance
quotes and provides links for Complainant that contain false and misleading
information.
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. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also 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.”).
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’s
registration for its STATE FARM INSURANCE mark with the USPTO is sufficient to
establish Complainant’s rights in the mark.
See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant
argues that the <statefarmsurance.com> domain name is confusingly
similar to Complainant’s mark. The
disputed domain name wholly incorporates Complainant’s mark and merely deletes
the letters “i” and “n.” The Panel
finds that deleting letters constitutes typosquatting and is insufficient to
distinguish Respondent’s domain name from Complainant’s mark. See 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); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA
103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to the complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark).
The Panel
concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<statefarmsurance.com> domain name. Complainant’s assertion establishes a prima facie case and
shifts the burden to Respondent. To
meet its burden, Respondent must provide the Panel with evidence that it does
have rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is not commonly known by the disputed domain name, but
rather by the name “Zone MP3.” Without
a response from Respondent, the Panel accepts as true Complainant’s allegation
that Respondent is not commonly known by the disputed domain name. See 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). The Panel concludes that because Respondent
is not commonly known by the disputed domain name, it has not established
rights or legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also 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).
Complainant
provides evidence that Respondent’s website benefits from the confusing
similarity of the <statefarmsurance.com> domain name by displaying
links to insurance-related services and receiving pay-per-click fees from
Internet users clicking on these links.
Complainant argues that Respondent’s links directly compete with
Complainant. Because Respondent did not
respond, the Panel treats Complainant’s arguments as true. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”). Thus, the Panel concludes that
Respondent is not using the disputed domain name in connection with a bona
fide offering of goods or services for purposes of Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”); see also Ultimate Elecs., Inc. v.
Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the
respondent's “use of the domain name (and Complainant’s mark) to sell
products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
Additionally,
the Panel finds that Respondent lacks rights and legitimate interests in the
disputed domain name because it is taking advantage of Internet users by registering
a typosquatted version of Complainant’s mark.
See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that
the 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> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain name to divert Internet
users to a website that features links to goods and services relating to
insurance and finance and to profit from diverting such Internet users to
various websites. The Panel holds
Respondent is creating a likelihood of confusion for its own commercial
gain. The Panel concludes that such use
is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the 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 the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
Moreover, the
Panel holds that Respondent is engaging in the practice of typosquatting. The Panel concludes that typosquatting is
evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Zone Labs,
Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. 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 “simple misspelling” of
the complainant's DERMALOGICA mark which indicated typosquatting
and bad faith pursuant to Policy 4(a)(iii)).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <statefarmsurance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
Sept. 9, 2005
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