State Farm Mutual Automobile Insurance
Company v. J. Lee
Claim
Number: FA0502000419054
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL,
61710. Respondent is J. Lee (“Respondent”), 18 Salisbury
Road, Kowloon, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <statefarmcard.com>, <statefarmbenefits.com>,
<statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically February
11, 2005; the National Arbitration Forum received a hard copy of the Complaint February
14, 2005.
On
February 11, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain names <statefarmcard.com>,
<statefarmbenefits.com>, <statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org> are registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of
the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc.
d/b/a Dotregistrar.com registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 8, 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@statefarmcard.com,
postmaster@statefarmbenefits.com, postmaster@statefarmhealthplan.com,
postmaster@statefarmhealthplans.com and postmaster@wwwstatefarminsurance.org 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
March 9, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain names that Respondent
registered, <statefarmcard.com>, <statefarmbenefits.com>,
<statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org>, are confusingly similar to
Complainant’s STATE FARM and STATE FARM INSURANCE marks.
2. Respondent has no rights to or legitimate
interests in the <statefarmcard.com>, <statefarmbenefits.com>,
<statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org> domain names.
3. Respondent registered and used the <statefarmcard.com>,
<statefarmbenefits.com>, <statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
State Farm Mutual Automobile Insurance, is a nationally known company that has
been doing business under the STATE FARM mark since 1930. Complainant provides insurance and financial
services. Complainant registered its
STATE FARM (Reg. No. 1,979,585 issued June 11, 1996) and STATE FARM INSURANCE
(Reg. No. 1,125,010 issued September 11, 1979) marks with the United States
Patent and Trademark Office (“USPTO”).
Respondent
registered the <statefarmcard.com> domain name January 17, 2005,
the <statefarmhealthplan.com>, <statefarmhealthplans.com>
and <statefarmbenefits.com> domain names February 7, 2005 and the <wwwstatefarminsurance.org>
domain name February 9, 2005.
Respondent’s domain names resolve to a website that features links to
competing insurance and financial services websites.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
STATE FARM and STATE FARM INSURANCE marks through registration of the marks
with the USPTO as well as by continuous use of the marks in commerce since
1930. See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a presumption that may be rebutted that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The domain names
that Respondent registered, <statefarmcard.com>, <statefarmbenefits.com>,
<statefarmhealthplan.com> and <statefarmhealthplans.com>,
are confusingly similar to Complainant’s STATE FARM mark. Respondent’s domain names incorporate
Complainant’s mark in its entirety and merely add the generic or descriptive
terms “card,” “benefits,” “health plan” or “health plans.” Such additions are not enough to overcome a
finding of confusing similarity between Respondent’s domain names and
Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Space Imaging LLC
v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
The
domain name <wwwstatefarminsurance.org> that Respondent registered
is confusingly similar to Complainant’s STATE FARM INSURANCE mark. Domain
names that contain third-party marks in their entirety and merely affix the
prefix “www” to the marks have consistently been found to be confusingly
similar to the marks under the Policy.
In this case, Respondent’s domain name incorporates the STATE FARM
INSURANCE mark in its entirety, along with the prefix “www.” Consequently, the
disputed domain name is confusingly similar to Complainant’s mark under Policy
¶ 4(a)(i). See Marie Claire Album v.
Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and thus
Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
Complainant's MARIE CLAIRE trademark); see also Dana Corporation v. $$$ This
Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002)
(finding Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's registered DANA mark because Complainant's mark remains the
dominant feature).
Furthermore the
addition of the generic top-level domains “.com” and “.org” to Complainant’s
marks, as well as the omission of the spaces between the terms in Complainant’s
marks, are insufficient to negate a finding of confusing similarity 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.
Complainant
established in this proceeding that it has rights to and interests in the marks
contained in their entirety within the disputed domain names. Complainant alleges that Respondent has no
such rights. Respondent failed to respond to the Complaint. Therefore, the Panel may accept all
reasonable assertions and allegations set forth by Complainant as true and accurate. See Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that
in the absence of a Response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do); 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).
In addition,
where Complainant makes the necessary showing and Respondent does not come
forward to establish rights or legitimate interests in the disputed domain
names, the Panel may interpret Respondent’s failure to respond as evidence that
Respondent lacks rights and legitimate interests in the disputed 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.”).
Further,
Respondent is using the <statefarmcard.com>, <statefarmbenefits.com>,
<statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org> domain names to operate a website
that features links to competing insurance and financial services
websites. Such competing use is not a
use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Coryn
Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding
that Respondent was not using domain names for a bona fide offering of goods or
services nor a legitimate noncommercial or fair use because Respondent used the
names to divert Internet users to a website that offered competing services
with those offered by Complainant under its marks); 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 famous marks. Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain names pursuant to Policy ¶ 4(c)(ii). See 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); see
also 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").
The fact that
Respondent’s <wwwstatefarminsurance.org> domain name is merely a
“typosquatted” variation of Complainant’s STATE FARM INSURANCE mark is 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 Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis-à-vis
Complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <statefarmcard.com>, <statefarmbenefits.com>,
<statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org> domain names, which are
confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks,
to operate a website that features links to competing insurance and financial
services websites. The Panel finds that
such competing use constitutes disruption and is evidence that Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that Respondent has diverted business from Complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also 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).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing insurance and financial services websites. Since Respondent’s domain names contain confusingly similar
versions of Complainant’s marks, consumers accessing Respondent’s domain names
may become confused as to Complainant’s affiliation with the resulting
website. Thus, the Panel finds that
Respondent’s commercial use of the disputed domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”).
Additionally,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the STATE FARM and STATE FARM INSURANCE
marks due to Complainant’s registration of the marks with the USPTO and long
use in commerce of the marks.
Furthermore, the Panel infers that Respondent had actual knowledge of
Complainant’s rights in the marks due to the obvious connection between the
content featured on Respondent’s website and Complainant’s business. Registration of a domain name that is
confusingly similar to a mark, despite actual or constructive knowledge of
another’s rights in the mark, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also 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 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 the domain name, <wwwstatefarminsurance.org>, is merely
a “typosquatted” variation of Complainant’s STATE FARM INSURANCE mark is evidence
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See Canadian
Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (holding that “[t] absence of a dot between the
‘www’ and ‘canadiantire.com’ [in the <wwwcanadiantire.com> domain name
is] likely to confuse Internet users, encourage them to access Respondent’s
site” and evidenced bad faith registration and use of the domain name); see
also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO
Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of
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 <statefarmcard.com>, <statefarmbenefits.com>,
<statefarmhealthplan.com>, <statefarmhealthplans.com>
and <wwwstatefarminsurance.org> domain names be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 23, 2005
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