State Farm Mutual Automobile Insurance Company v. Mike Morgan
Claim Number: FA1007001333179
Complainant is State
Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Monke, of State Farm Mutual
Automobile Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmwww.com>, registered with Moniker Online Services, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2010.
On July 6, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmwww.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@statefarmwww.com by e-mail. Also on July 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <statefarmwww.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmwww.com> domain name.
3. Respondent registered and used the <statefarmwww.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, was founded in 1930 and provides insurance and financial services. Complainant offers these services under its STATE FARM mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for the STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent, Mike Morgan, registered the <statefarmwww.com> domain name on June 1, 2010. The disputed domain name resolves to a website that contains third-party hyperlinks to Complainant’s competitors in the insurance and financial services 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 holds trademark registrations with the USPTO for
its STATE FARM mark (e.g., Reg. No.
1,979,585 issued June 11, 1996). The
Panel finds Complainant has established rights in its STATE FARM mark pursuant
to Policy ¶ 4(a)(i).
See Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also
Complainant alleges that Respondent’s <statefarmwww.com>
domain name is confusingly similar to Complainant’s STATE FARM mark. The disputed domain name removes the space
separating the terms of the mark, adds three letters “www,” and adds the
generic top-level domain (“gTLD”) “.com.”
Previous panels have held that a disputed domain name is confusingly
similar to a complainant’s mark even after the removal of a space, addition of
letters, and the addition of a gTLD. See U.S. News & World
Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007)
(“Elimination of punctuation and the space between the words of Complainant’s
mark, as well as the addition of a gTLD does not sufficiently distinguish the
disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also L.F.P., Inc. v. Yarbrough, FA
114420 (Nat. Arb. Forum July 9, 2002) (finding that <xxxbarelylegal.com>
domain name to be confusingly similar to the complainant’s BARELY LEGAL mark
because the addition of “xxx” was not a distinguishing addition); see also Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <statefarmwww.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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).
Complainant argues Respondent is not commonly known by the <statefarmwww.com> domain name. The WHOIS information identifies the domain name registrant as “Mike Morgan,” which the Panel finds is not similar to the <statefarmwww.com> domain name. Complainant claims that Respondent does not perform business under the domain name at issue and that Respondent does not possess independent intellectual property rights in the <statefarmwww.com> domain name. Complainant asserts that Respondent is not authorized or licensed to use Complainant’s STATE FARM mark. Respondent fails to address Complainant’s assertions or to provide evidence that Respondent is commonly known by the disputed domain name. Based on the evidence in the record, the Panel determines that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <statefarmwww.com> domain name resolves to a website that features third-party hyperlinks to Complainant’s competitors in the insurance and financial services industry. The Panel presumes that Respondent receives click-through fees from aforementioned hyperlinks. The Panel concludes that Respondent’s use of the <statefarmwww.com> domain name does not constitute a bona fide offering goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Complainant contends that Respondent’s use of the <statefarmwww.com> domain name constitutes typosquatting. The disputed domain name contains Complainant’s entire STATE FARM mark and simply adds the letters “www.” The Panel finds Respondent’s use of the <statefarmwww.com> domain name constitutes typosquatting and is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <statefarmwww.com> domain name to resolve to a website that contains hyperlinks to Complainant’s third-party competitors in the insurance and financial services industry. Internet users interested in Complainant’s insurance and financial services may purchase competing services from a competitor due to Respondent’s use of the confusingly similar disputed domain name. The Panel finds Respondent’s use of the <statefarmwww.com> domain name disrupts Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel infers that Respondent receives click-through fees from the aforementioned hyperlinks. Internet users may become confused as to Complainant’s sponsorship of, or association with, the disputed domain name and resolving website. Respondent has created this confusion through its use of the <statefarmwww.com> domain name and is attempting to profit from this confusion. The Panel finds Respondent’s use of the <statefarmwww.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel has previously found that Respondent has engaged in typosquatting with its <statefarmwww.com> domain name. The Panel finds the evidence of Respondent’s typosquatting is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). SeeComputerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds 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 <statefarmwww.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: August 12, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum