State Farm Mutual Automobile Insurance Company v. Jason Cox d/b/a Jason J Cox Inc
Claim Number: FA0603000654541
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Jason Cox d/b/a Jason J Cox Inc (“Respondent”), C-4 Jasons Mansion, Albuquerque, NM 87104.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <1statefarminsurance16.info> and <1statefarminsurance18.info>, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 8, 2006.
On March 8, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <1statefarminsurance16.info> and <1statefarminsurance18.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 March 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 4, 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@1statefarminsurance16.info and postmaster@1statefarminsurance18.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <1statefarminsurance16.info> and <1statefarminsurance18.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 <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names.
3. Respondent registered and used the <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company,
does business in the insurance and financial services industries. Complainant began doing business under its
STATE FARM mark in 1930 and registered the mark with the United States Patent
and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585). Complainant has also registered numerous
other marks with the USPTO and throughout the world, including its STATE FARM
INSURANCE mark (Reg. No. 1,125,010 issued September 11, 1979). Furthermore, due to Complainant’s
substantial efforts to promote and develop goodwill in its marks through
television and other media, Complainant’s marks have become well-known
throughout the United States in association with Complainant’s insurance and
financial services.
Respondent registered the <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names on November 3, 2005. The disputed domain names resolve to websites that display Complainant’s STATE FARM INSURANCE mark and include links to news stories, a fund for Hurricane Katrina victims and Complainant’s competitors in the insurance industry.
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 provided evidence of its registration of the STATE FARM INSURANCE mark with the USPTO, which the Panel deems sufficient to establish Complainant’s rights for purposes of Policy ¶ 4(a)(i). 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.”).
The <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names include Complainant’s STATE FARM INSURANCE mark in its entirety and add numerals at the beginning and end of the mark along with the generic top-level domain “.info.” The additions of numbers and “.info” to Complainant’s registered mark do not distinguish the domain names from the mark. Therefore, the Panel concludes that the domain names are confusingly similar to the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).
Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has the initial burden of establishing a prima
facie case that Respondent lacks rights and legitimate interests in the <1statefarminsurance16.info>
and <1statefarminsurance18.info> domain names under Policy ¶
4(a)(ii). Once Complainant has
satisfied its burden, that burden falls on Respondent to provide evidence of
its rights or legitimate interests under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”). Due to Respondent’s failure to Respond, the
Panel may presume that Respondent has failed to meet its burden. See Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel chooses to
evaluate whether the evidence provided supports a finding of Respondent’s
rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names and does not possess any independent intellectual property rights in the names. Furthermore, Complainant asserts that it has not authorized Respondent to use any of its marks to register domain names or for any other purpose. Respondent has not presented the Panel with any evidence to rebut these assertions, and there is no other evidence in the record suggesting that Respondent might be commonly known by the domain names. Thus, the Panel finds that there is no support for a finding under Policy ¶ 4(c)(ii) that Respondent has rights or legitimate interests in the domain names. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 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).
Respondent is using the <1statefarminsurance16.info>
and <1statefarminsurance18.info> domain names to operate websites
that offer links to news stories, a fund for Hurricane Katrina victims and
Complainant’s competitors in the insurance business. The Panel presumes that Respondent operates these websites for
the purpose of receiving click-through fees from third parties that receive
Internet traffic via the links on Respondent’s website. Respondent’s use of Complainant’s STATE FARM
INSURANCE mark in association with Respondent’s commercial website 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 names
pursuant to Policy ¶ 4(c)(ii). See
State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of
information and services under a mark owned by a third party cannot be said to
be the bona fide offering of goods or services.”); see also Am. Online, Inc. v. Tencent Communicatins
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”).
Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent’s use of the <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names to operate websites that display links to third-party websites, including Complainant’s competitors in the insurance industry, suggests that Respondent was attempting to capitalize on the goodwill associated with Complainant’s STATE FARM INSURANCE mark. By using Complainant’s famous mark in the domain names and displaying Complainant’s mark on the resulting websites, Respondent is able to confuse Internet users who inadvertently reach Respondent’s websites while searching for information relating to Complainant. Such use based on the confusing similarity between the mark and the domain names, is evidence that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See 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.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Furthermore, the evidence suggests that Respondent likely had actual or constructive notice of Complainant’s rights in the STATE FARM INSURANCE mark when it registered the <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names, which include the mark. First, Complainant’s registration of the STATE FARM INSURANCE mark with the USPTO more than twenty-six years prior to Respondent’s registration of the domain names conferred constructive notice on Respondent, because both parties are located in the United States. See 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.”). In addition, due to Complainant’s substantial efforts to promote and develop the goodwill in its mark, Complainant’s STATE FARM INSURANCE mark has become well-known in the United States, making it likely that Respondent had actual knowledge of the mark when it registered the domain names. Thus, based on these circumstances, the Panel determines that Respondent chose the disputed domain names based on the goodwill associated with Complainant’s mark. This is further evidence of Respondent’s bad faith registration and use of the domain names under Policy ¶ 4(b)(iii). See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity); see also 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).
Complainant has satisfied the requirements of 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 <1statefarminsurance16.info> and <1statefarminsurance18.info> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 25, 2006
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