State Farm Mutual Automobile Insurance Company v. Domain Registration c/o Registerfly.com
Claim Number: FA0601000637374
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Domain Registration c/o Registerfly.com (“Respondent”), 623 Eagle Rock Avenue, West Orange, NJ 07052.
The domain names at issue are <beststatefarmins.info> and <beststatefarminsuranceflorida.info>, registered with Enom, Inc.
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 J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 31, 2006.
On February 1, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 February 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 23, 2006 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@beststatefarmins.info and postmaster@beststatefarminsuranceflorida.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. 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 <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names are confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names.
3. Respondent registered and used the <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is known throughout North America as a leading insurance and financial services company. Complainant has been using variations of the STATE FARM mark in commerce since 1930.
Complainant has registered the STATE FARM INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,125,010 issued on September 11, 1979; Reg. No. 1,087,834 issued on March 21, 1978). Complainant has also registered numerous variations of the STATE FARM mark with the USPTO, including STATE FARM (Reg. No. 1,979,585 issued on June 11, 1996), STATE FARM INSURANCE COMPANIES (Reg. No. 645,890 issued on May 21, 1957), STATE FARM BANK (Reg. No. 2,319,867 issued on February 15, 2000), and STATE FARM FEDERAL SAVINGS BANK (Reg. No. 2,296,986 issued on November 30, 1999).
Respondent registered the <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names on May 31, 2005. Both of Respondent’s domain names resolve to a website featuring commercial advertisements and links unrelated to Complainant’s insurance and financial services.
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 has established rights in the STATE FARM
INSURANCE mark through registration of the mark with the USPTO. See 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.”); see also 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.”).
Respondent’s domain names are both confusingly similar to Complainant’s STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i). First, both domain names incorporate Complainant’s entire mark and add the generic word “best” to the front of the mark. Second, the <beststatefarminsuranceflorida.info> domain name adds a geographic term to the end of the mark. Third, the <beststatefarmins.info> domain name abbreviates the term “insurance” in Complainant’s mark. Panels have held that adding of generic or geographic terms to a complainant’s mark and abbreviating terms in a mark do not sufficiently distinguish a domain name from a mark. 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 the complainant combined with a generic word or term); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark). Thus, Respondent’s <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names are confusingly similar to Complainant’s STATE FARM INSURANCE mark.
In addition, Respondent’s <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names eliminate the spaces in Complainant’s STATE FARM INSURANCE mark and add the generic top-level domain “.info.” Panels have held that the elimination of spaces and the addition of generic top-level domains are irrelevant in conducting a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks); 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <beststatefarmins.info> and < beststatefarminsuranceflorida.info> domain names. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <beststatefarmins.info>
and <beststatefarminsuranceflorida.info> domain names. See
BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain name under the name
“Domain Registration c/o Registerfly.com” and there is no other evidence in the
record suggesting that Respondent is commonly known by the <beststatefarmins.info>
and <beststatefarminsuranceflorida.info> domain names. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13,
2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”).
Moreover, Respondent is using the <beststatefarmins.info>
and <beststatefarminsuranceflorida.info> domain names, which are
confusingly similar to Complainant’s STATE FARM INSURANCE mark, to divert
Internet users to a website featuring commercial advertisements and links
unrelated to Complainant’s mark. Use of
the disputed domain name for commercial gain by misdirecting Internet users to
unrelated third-party websites does not constitute a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Disney Enters., Inc.
v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the
respondent’s diversionary use of the complainant’s mark to attract Internet
users to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names); see also
Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <beststatefarmins.info>
and <beststatefarminsuranceflorida.info> domain names, which are
confusingly similar to Complainant’s STATE FARM INSURANCE mark, to divert
Internet users seeking Complainant’s insurance and financial services to a website
displaying commercial advertisements and links unrelated to Complainant’s
mark. Respondent likely receives
click-through fees for each consumer it diverts to other websites. Therefore, Respondent is taking advantage of
the likelihood of confusion between Respondent’s domain name and Complainant’s
mark and capitalizing on the goodwill associated with the mark. The Panel finds that such use provides
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island
Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that
“[s]ince the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become confused as to
Complainant’s affiliation with the resulting search engine website” in holding
that the domain names were registered and used 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); 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.”).
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 <beststatefarmins.info> and <beststatefarminsuranceflorida.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 15, 2006
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