State Farm Mutual Automobile Insurance Company v. PMA Media Group c/o Dewey MacKay
Claim Number: FA0703000942510
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insurancestatefarmsaves.info>, registered with RegisterFly.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2007.
On
On March 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 2007 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@insurancestatefarmsaves.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <insurancestatefarmsaves.info> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <insurancestatefarmsaves.info> domain name.
3. Respondent registered and used the <insurancestatefarmsaves.info> 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 conducting
business in the insurance and financial services industries. Complainant holds a registered trademark with
the United States Patent and Trademark Office (“USPTO”) for the STATE FARM
INSURANCE mark (Reg. No. 1,125,010 issued September 11, 1979).
Respondent, PMA Media Group
c/o Dewey MacKay, registered the <insurancestatefarmsaves.info>
domain name on
On
Respondent has been previously ordered by National
Arbitration Forum panels to transfer the domain name registrations of four
other domain names that were found to be infringing upon the complainants’
trademarks. The panels found that each
of the domain names were confusingly similar to the complainants’ marks and
were registered and used in bad faith by Respondent, who did not have any
rights or legitimate interests in the marks.
E.g., Seiko
Epson Corp. & Epson America, Inc. v. PMA Media Grp. c/o Dewey MacKay,
FA 767167 (Nat. Arb. Forum Sept. 22, 2006) (transferring the
<epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com>
domain names to the complainant); The
Neiman Marcus Group, Inc. & NM Nevada Trust v. Dewey MacKay d/b/a PMA Media
Grp., FA 813531 (Nat. Arb. Forum
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 of the STATE FARM INSURANCE mark with the USPTO in 1979 preceded Respondent’s registration of the <insurancestatefarmsaves.info> domain name in 2006. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant. Thus, the Panel finds that Complainant has established rights in the STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i)); see also America Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark).
Respondent’s <insurancestatefarmsaves.info> domain name incorporates Complainant’s STATE FARM INSURANCE mark in its entirety, but with the word “insurance” as the first word and the addition of the word “saves” and the generic top-level domain (“gTLD”) “.info.” The inversion of the words in Complainant’s mark does not avoid a finding of confusing similarity because the mark retains the same meaning. The addition of the generic word “saves,” which describes an aspect of Complainant’s business, also does not sufficiently distinguish the disputed domain name from Complainant’s mark. Finally, the addition of a gTLD is without relevance to this analysis because it is a requirement of every registered domain name. Therefore, the Panel finds that Respondent’s <insurancestatefarmsaves.info> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark pursuant to Policy ¶ 4(a)(i). See Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
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 <insurancestatefarmsaves.info> 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (the assertion by the complainant that the respondent does not have rights or legitimate interests is ordinarily sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Because Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not, nor has ever
been, commonly known by the <insurancestatefarmsaves.info>
domain name. The WHOIS information
identifies Respondent as “PMA Media Group c/o
Dewey MacKay,” and there is no other evidence in the record indicating that
Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that
Respondent is not commonly known by the <insurancestatefarmsaves.info> domain name pursuant to Policy
¶ 4(c)(ii). See M.
Shanken Communications v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum
Respondent is using the <insurancestatefarmsaves.info>
domain name to display a list of hyperlinks advertising the insurance
services of Complainant’s competitors.
Such use does not constitute 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). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website, which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent has engaged in a bad
faith pattern of registering and using trademark-related domain names,
including a domain name containing Complainant’s STATE FARM INSURANCE mark. Complainant cites several UDRP decisions in
which Respondent was found to have registered and used various trademark-related
domain names in bad faith. E.g., State Farm Mut. Auto. Ins.
Respondent is using the <insurancestatefarmsaves.info> domain name to display a list of hyperlinks advertising the insurance services of Complainant’s competitors. This is likely to disrupt Complainant’s business by diverting potential customers to Respondent’s website. The Panel finds that such registration and use of the <insurancestatefarmsaves.info> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <insurancestatefarmsaves.info> domain name, which is confusingly similar to Complainant’s STATE FARM INSURANCE mark, is likely to cause confusion among customers searching for Complainant’s insurance and financial services. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing services advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s STATE FARM INSURANCE mark. Therefore, the Panel finds that Respondent’s registration and use of the <insurancestatefarmsaves.info> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also 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).
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 <insurancestatefarmsaves.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 20, 2007
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