State Farm Mutual Automobile Insurance
Company v. LaPorte Holdings, Inc.
Claim
Number: FA0501000408267
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is LaPorte Holdings, Inc. (“Respondent”),
ATTN: wwwstatefarmins.com, ATTN:ststefarm.com, c/o Nameking, Inc., 2202 S.
Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwwstatefarmins.com> and <ststefarm.com>,
registered with Nameking.com, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 25, 2005.
On
January 24, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <wwwstatefarmins.com> and <ststefarm.com>
are registered with Nameking.com, Inc. and that Respondent is the current registrant
of the names. Nameking.com, Inc. has
verified that Respondent is bound by the Nameking.com, 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
January 26, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 15, 2005 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@wwwstatefarmins.com and
postmaster@ststefarm.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 25, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Sandra Franklin 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 <wwwstatefarmins.com>
and <ststefarm.com> domain names are confusingly similar to
Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwstatefarmins.com> and <ststefarm.com>
domain names.
3. Respondent registered and used the <wwwstatefarmins.com>
and <ststefarm.com> domain names 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
that has been doing business under the STATE FARM mark since 1930. Complainant engages in business in both the
insurance and the financial services industries. Complainant also has established a nationally recognized presence
on televised and other media.
Complainant
developed its Internet web presence in 1995 using the <statefarm.com>
domain name. At its website,
Complainant offers detailed information relating to a variety of topics
including its insurance and financial services products, consumer information,
and information about its independent contractor agents. Complainant has expended substantial time,
effort and funds to develop its website as a primary source of Internet
information for the products, services and information it provides.
Complainant has
registered its STATE FARM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent
registered the <ststefarm.com> domain name on November 6, 2002 and
the <wwwstatefarmins.com> domain name on September 28, 2004. Respondent’s domain names resolve to a
website that features links to competing insurance providers.
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.
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
established rights in the STATE FARM mark through registration with the USPTO
and through continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark; see also Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”).
Respondent’s <ststefarm.com>
and <wwwstatefarmins.com> domain names are typosquatted
variations of Complainant’s STATE FARM mark, and are thus confusingly similar
to the mark. Respondent’s <ststefarm.com>
domain name merely replaces the letter “a” in the term “state” with the letter
“s,” which is adjacent to the letter “a” on the typical QWERTY keyboard. Respondent’s <wwwstatefarmins.com>
domain name merely removes the period that separates the “www” prefix and
Complainant’s mark, as well as adding the letters “ins,” which stands for
“insurance.” Such minor changes are
insufficient to negate a finding of confusing similarity under Policy ¶
4(a)(i). See Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum
Apr. 28, 2003) finding that Respondent's
<marrriott.com> domain name was confusingly similar to Complainant's
MARRIOTT mark because "Respondent's typosquatting, by its
definition, renders the domain name confusingly similar to Complainant's
mark"; see also Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”.
Furthermore the
addition of the generic top-level domain “.com” and the omission of the spaces
between the terms in Complainant’s mark are not enough to distinguish the
domain names from the mark pursuant to Policy ¶ 4(a)(i). See
Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces
are impermissible in domain names and a generic top-level domain such as ‘.com’
or ‘.net’ is required in domain names”.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may interpret
Respondent’s failure to respond as evidence that Respondent lacks rights and
legitimate interests in the <ststefarm.com> and <wwwstatefarmins.com>
domain names pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name; see also 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.”).
Respondent is
using the domain names, which contain confusingly similar versions of
Complainant’s STATE FARM mark, to operate a website featuring links to
competing insurance providers. Such use
is 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). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see
also Ameritrade
Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) finding that Respondent’s use of the
disputed domain name to redirect Internet users to a financial services
website, which competed with Complainant, was not a bona fide offering of goods
or services.
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or is authorized to register domain names featuring
Complainant’s STATE FARM mark. Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the
domain names pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"; see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding
no rights or legitimate interests where Respondent was not commonly known by
the mark and never applied for a license or permission from Complainant to use the
trademarked name.
Moreover, the
fact that Respondent’s domain names are merely typosquatted variations of
Complainant’s STATE FARM mark is evidence that Respondent lacks rights and
legitimate interests in the domain names pursuant to Policy ¶ 4(a)(ii). See
IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum
Sept. 19, 2003) finding that Respondent lacked rights and legitimate interests
in the disputed domain names because it "engaged in the practice of typosquatting by taking
advantage of Internet users who attempt to access Complainant's
<indymac.com> website but mistakenly misspell Complainant's mark by
typing the letter 'x' instead of the letter 'c.'"; see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) finding
that the <ltdcommadities.com>, <ltdcommmodities.com>
and <ltdcommodaties.com> disputed domain names were typosquatted
versions of Complainant's LTD COMMODITIES mark and "Respondent's
'typosquatting' is evidence that Respondent lacks rights or legitimate
interests in the disputed domain names."; see also Canadian Tire Corp., Ltd. v. domain
adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) finding Respondent lacked rights or legitimate interests in the
<wwwcanadiantire.com> domain name where it used the domain name as a part
of Complainant’s affiliate program in exchange for specified commissions,
evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <ststefarm.com> and <wwwstatefarmins.com>
domain names, which are confusingly similar to Complainant’s STATE FARM mark,
to operate a website that features links to competing insurance providers. Such use constitutes disruption and is
evidence that Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business; see also EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business.
Respondent is
using the <ststefarm.com> and <wwwstatefarmins.com> domain
names, which contain confusingly similar versions of Complainant’s STATE FARM
mark, to market competing insurance providers.
Internet users searching for Complainant online who access Respondent’s
domain names may become confused as to Complainant’s affiliation with the
resulting website. Thus, Respondent’s
commercial use of the domain names is evidence that Respondent registered and
used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
eBay, Inc v. Progressive Life
Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site; see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website.
Furthermore,
Respondent registered the <ststefarm.com> and <wwwstatefarmins.com>
domain names with actual or constructive knowledge of Complainant’s rights
in the STATE FARM mark due to Complainant’s registration of the mark with the
USPTO and the fame that Complainant’s mark has acquired. Moreover, the Panel infers that Respondent
registered the domain names with actual knowledge of Complainant’s rights in
the STATE FARM mark due to the obvious link between Complainant and the content
featured on Respondent’s website.
Registration of domain names that include another’s mark, despite
knowledge of the mark holder’s rights, is tantamount to bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
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.”); see also Ty
Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) finding that Respondent’s
registration and use of an identical and/or confusingly similar domain name was
in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent
should have been aware of it; see also
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) finding that
because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about the
Complainant’s mark when it registered the subject domain name”.
Moreover, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s STATE FARM mark is evidence that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See
Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
Oct. 15, 2003) finding that Respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant's ZONEALARM mark. "Typosquatting, itself
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii)."; see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting, in which Respondent has engaged, has been deemed behavior in bad
faith."); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith.
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 <wwwstatefarmins.com> and <ststefarm.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 4, 2005
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