State Farm Mutual Automobile Insurance Company v. Tulip Company / Tulip Trading Company
Claim Number: FA1606001681653
Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, United States. Respondent is Tulip Company / Tulip Trading Company ("Respondent"), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmfireclaims.com>, registered with Key-Systems GmbH.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2016; the Forum received payment on June 28, 2016.
On June 30, 2016, Key-Systems GmbH confirmed by email to the Forum that the <statefarmfireclaims.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 June 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@statefarmfireclaims.com. Also on June 30, 2016, 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.
An email message was received from Respondent on July 1, 2016, offering to transfer the domain name in order to settle the dispute. Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a nationally known company engaged in the insurance and financial services industries. Complainant began using the STATE FARM mark in 1930. Complainant's marks registered in the United States include STATE FARM (registered in 1996), STATE FARM INSURANCE (registered in 1979), and others.
Respondent registered the disputed domain name <statefarmfireclaims.com> in 2015 through a privacy service, concealing its identity. Complainant contends that the disputed domain name is confusingly similar to Complainant's STATE FARM and related marks. Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that it has no association with Respondent, that it has not authorized Respondent to use its mark, and that Respondent has never been known by the domain name. The disputed domain name resolves to a web page comprised of pay-per-click links to various insurance companies and products, some of which are in direct competition with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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(f), 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.").
The disputed domain name <statefarmfireclaims.com> incorporates Complainant's registered STATE FARM mark, omitting the space and appending "fire claims"—a generic term related to Complainant's business—and the ".com" top-level domain. These alterations do not diminish the similarity between the domain name and Complainant's mark. See, e.g., State Farm Mutual Automobile Insurance Co. v. Joe Villa c/o Stem Cell Capital Inc., FA 1530548 (Forum Dec. 24, 2013) (finding <statefarmpropertyclaims.com> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. Glass Auto Claims, FA 1282900 (Forum Oct. 8, 2009) (finding <statefarmautoclaims.com> confusingly similar to STATE FARM); State Farm Mutual Insurance Co. v. Tom Reger, FA 95651 (Forum Nov. 14, 2000) (finding <statefarmclaims.com> confusingly similar to STATE FARM). The Panel therefore considers the domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and its only apparent use has been for a website comprised of pay-per-click links relating to Complainant's industry, including links to Complainant's competitors. See, e.g., State Farm Mutual Automobile Insurance Co. v. statefarm-inc c/o Terry Amstrong, FA 1647696 (Forum Dec. 17, 2015) (finding lack of rights or legitimate interests in similar circumstances). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The Panel notes that Respondent has been found in several previous proceedings under the Policy to have registered domain names in bad faith, suggesting a pattern of bad faith registrations under paragraph 4(b)(ii). See Kellogg North America Co. v.Tulip Co. / Tulip Trading Co., FA 1671756 (Forum May 31, 2016); Dollar Bank, Federal Savings Bank v. Dollarabank.com Owner, c/o whoisproxy.com Ltd. / Tulip Trading Co., D2016-0699 (WIPO May 17, 2016); National Grid Electricity Transmission Plc & NGrid Intellectual Property Ltd. v. Tulip Trading Co., D2016-0036 (WIPO Feb. 12, 2016); A.S. Roma S.p.A., A.S.R. Media & Sponsorship S.r.l. v. Tulip Trading Co. Ltd., D2015-1977 (WIPO Dec. 29, 2015); Sanofi v. Tulip Trading Co. / On behalf of sanofi-us.com OWNER / c/o whoisproxy.com Ltd., D2015-1775 (WIPO Dec. 23, 2015); Accenture Global Services Ltd. v. Tulip Trading Co., D2015-1520 (WIPO Oct. 27, 2015).
Respondent registered a domain name that was clearly intended to convey the impression that it belongs to Complainant, and is using this domain name for the purpose of displaying and presumably profiting from links to third-party websites, including competitors of Complainant. Such conduct is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv).
Finally, Respondent's use of a privacy registration service to conceal its identity is a further indication of bad faith. See, e.g., YETI Coolers, LLC v. John c Cooper III, FA 1677553 (Forum July 5, 2016). The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmfireclaims.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 2, 2016
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