State Farm Mutual Automobile Insurance Company v. ICS INC.
Claim Number: FA1312001532366
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwstatefarme.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2013; the National Arbitration Forum received payment on December 2, 2013.
On December 3, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <wwwstatefarme.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2013 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@wwwstatefarme.com. Also on December 4, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
1. Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930.
2. Complainant owns registrations for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) as well as with other authorities internationally.
3. Respondent’s <wwwstatefarme.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
4. Respondent has no rights or legitimate interests in the <wwwstatefarme.com> domain name.
a. Respondent is not associated with Complainant in any way.
b. Complainant has not authorized Respondent to register the disputed domain name or use the STATE FARM mark for Respondent’s business purposes.
c. Respondent is not commonly known by the disputed domain name and has never been known or performed business under the disputed domain name.
d. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
e. Respondent’s disputed domain name resolves to a parked website containing click-through links to various third-parties.
5. Respondent has registered and is using the <wwwstatefarme.com> domain name in bad faith.
a. Respondent’s resolving website gives the impression that Internet users will receive information regarding Complainant’s business.
b. Respondent’s typosquatting behavior indicates bad faith use and registration.
c. Respondent had knowledge of Complainant’s STATE FARM mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is State Farm Mutual Automobile Insurance Company who list its address as Bloomington, IL, USA. Complainant is the owner of domestic and international registrations for the marks STATE FARM and STATE FARM INSURANCE, as well as related marks used in connection with the goods and services Complainant offers in the financial and insurance industries. Complainant has continuously used the STATE FARM mark since at least as early as 1996. Complainant also provides its services over the internet via its official website <statefarm.com>.
Respondent is ICS, Inc. of Grand Cayman, Cayman Islands. Respondent’s registrar’s address is listed as Mumbai, India. Respondent registered the disputed domain name on or about April 30, 2013.
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."
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.
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.”).
Complainant argues that it is a nationally known company that has been doing business under the name “State Farm” since 1930. Complainant provides the panel with evidence that it owns registrations for the STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 registered June 11, 1996) as well as with other authorities internationally for example, the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA 559,285 registered March 15, 2002) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 10,501,997 registered May 15, 2012). Prior Panels have concluded that providing evidence of a registration for a disputed domain name with a recognized trademark authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Petroleo Brasileiro S.A. – Petrobras v. Munoz, FA 1222428 (Nat. Arb. Forum Oct. 16, 2008) (finding complainant’s multiple trademark registrations around the world, including those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”), established complainant’s rights in its mark under Policy ¶ 4(a)(i)). The Panel further notes that prior panels have found that it is irrelevant whether Complainant owns a registration for its mark in the location of respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel here finds that Complainant has established rights in the STATE FARM mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wwwstatefarme.com> domain name is confusingly similar to Complainant’s STATE FARM mark. The Panel notes that Respondent’s <wwwstatefarme.com> domain name features Complainant’s STATE FARM mark in its entirety, while eliminating the space between the word “state” and “farm” and adding the generic top-level domain (“gTLD”) “.com.” Panels have traditionally found that eliminating the space in a registered mark and adding a gTLD is not a sufficient way to differentiate a disputed domain name from a given mark. 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).”). The Panel also notes that Respondent adds the prefix “www” to Complainant’s STATE FARM mark and the letter “e” to the end of Complainant’s mark. Prior UDRP panels have found that adding the prefix “www” and the letter “e” is not enough to overcome a finding of confusingly similar under Policy 4(a)(i). See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerworld.com> is confusingly similar to the complainant’s mark, COMPUTERWORLD). The Panel here finds that Respondent’s <wwwstatefarme.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the <wwwstatefarme.com> domain name. Complainant claims that Respondent is not associated with Complainant in any way and that Complainant has not authorized Respondent to register the disputed domain name or use the STATE FARM mark for Respondent’s business purposes. The Panel notes that the WHOIS information for Respondent lists “ICS INC.” as Registrant of the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name and has never been known by or performed business under the disputed domain name. Prior panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence on the record or otherwise, indicating that respondent is known by the domain name at issue. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel here finds that Respondent has no rights or legitimate interests in the <wwwstatefarme.com> domain name because Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wwwstatefarme.com> domain name. Complainant asserts that Respondent’s disputed domain name resolves to a parked website containing click-through links to various third-parties. The Panel notes Complainant’s Exhibit 3 displaying that the website resolving from Respondent’s disputed domain name appears to feature third-party links including, “School Grants For,” “2013 Grants,” “SBA Business Loans,” “Hartford Success,” “Apply for College,” and “Minority Grants.” Prior panels have concluded that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name where the disputed domain name incorporates a complainant’s mark to attract Internet users to a website featuring links that are unrelated to the complainant’s business. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel here finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wwwstatefarme.com> domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has registered and is using the <wwwstatefarme.com> domain name in bad faith. Complainant claims that Respondent’s use of Complainant’s STATE FARM mark in the disputed domain name as well as Respondent’s use of the resolving website give the impression that Internet users will receive information regarding Complainant’s business. As noted above, Complainant claims that Respondent’s disputed domain name resolves to a website featuring parked links that are unrelated to Complainant’s business. Past UDRP panels have found bad faith when a respondent uses a confusingly similar domain name to direct Internet users to a website displaying commercial links from which respondent generates pay-per-click fees. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel here finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv)).
Additionally, Complainant argues that Respondent’s typosquatting behavior indicates bad faith use and registration. As discussed above, Respondent adds an extra “e” to the end of the word “farm.” The Panel again notes that Respondent adds “www” without a period, to the beginning of Complainant’s mark. The Panel recognizes that previous panels have found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. 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).”). The Panel here finds that Respondent engaged in typosquatting and that this behavior indicates bad faith under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwstatefarme.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 14, 2014
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