State Farm Mutual Automobile Insurance
Company v. WWW Enterprise, Inc.
Claim
Number: FA0503000444370
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented by Janice K. Forrest, One State
Farm Plaza, A-3, Bloomington, IL 61710. Respondent is WWW Enterprise, Inc. (“Respondent”), P.O. Box 118, 5850 West Third Street, Los Angeles,
CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwstatefarm.net>, registered with Onlinenic,
Inc..
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 21, 2005.
On
March 21, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <wwwstatefarm.net> is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc.
has verified that Respondent is bound by the Onlinenic, 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
March 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 11, 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@wwwstatefarm.net 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
April 18, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwstatefarm.net>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwstatefarm.net> domain name.
3. Respondent registered and used the <wwwstatefarm.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
State Farm, is a nationally known company that has been engaged in business in
both the insurance and the financial services industry since 1930. Complainant
has used the STATE FARM mark since 1930. State Farm developed its Internet
presence in 1995. Complainant has
invested a substantial amount of money, time and effort in developing its
website as a primary source of Internet information for the products and
services it offers.
Complainant has
registered numerous marks with the United States Patent and Trade Office
(“USPTO”), including Reg. Nos. 1,979,585 (issued June 11, 1996); 2,319,867
(issued February 15, 2000); 2,198,246 (issued October 20, 1998); 2,174,935
(issued July 21, 1998); 1,579,406 (issued January 23, 1990); 2,296,986 (issued
November 30, 1999) and 1,220,284 (issued December 14, 1982). Complainant has
used the STATE FARM mark continuously in commerce since 1930.
Respondent
registered the <wwwstatefarm.net> domain name on March 1, 2005.
Respondent’s domain name resolves to a website displaying numerous links to
other websites offering insurance and financial services products in
competition with Complainant.
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 of the mark with
the USPTO and through the continuous use of the mark in commerce since 1930. See
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 rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); 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 <wwwstatefarm.net>
domain name is identical to Complainant’s STATE FARM mark. The mere
addition of the “www” prefix and the generic top-level domain “.net” is not
enough to distinguish Respondent’s domain name from Complainant’s mark pursuant
to Policy ¶ 4(a)(iii). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top-level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Nike,
Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain
name <nike.net> is identical to Complainant’s famous NIKE mark); see
also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6,
2002) (holding confusing similarity has been established because the prefix
"www" does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark);
see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond the Complaint. Therefore, the Panel may accept all reasonable
assertions and allegations set forth by Complainant as true and accurate. See
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); 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 has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, 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 <wwwstatefarm.net>
domain name 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 name to operate a website that
features links to competing insurance-related sites. Such use is not in
connection with a bona fide offering of goods and 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 commonly known by the <wwwstatefarm.net>
domain name or is authorized to register domain names incorporating
Complainant’s STATE FARM mark. Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the domain name 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 interest where Respondent was not commonly
known by the mark and never applied for a license or permission from Complainant
to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <wwwstatefarm.net> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii) by using the domain name, which contains a
confusingly similar version of Complainant’s STATE FARM mark, to market
competing insurance-related websites. 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).
Furthermore,
Respondent is capitalizing on the goodwill of the STATE FARM mark by using the
disputed domain name to divert Internet users to a website featuring links to
competing insurance-related websites. The Panel infers that Respondent receives
click- through fees for redirecting Internet users to the competing websites.
Since the disputed domain contains Complaint’s mark, consumers searching for
Complainant could become confused as to Complainant’s affiliation with the
resulting website. Therefore, Respondent’s opportunistic use of the <wwwstatefarm.net>
domain name represents bad faith registration and use under 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 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).
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 <wwwstatefarm.net> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: May 16, 2005
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