State Farm Mutual Automobile Insurance Company v. Domaincar
Claim Number: FA0601000629214
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Domaincar (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwstatefarminsurance.com>, registered with DotRegistrar.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 18, 2006.
On January 20, 2006, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <wwwstatefarminsurance.com> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar 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, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2006 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@wwwstatefarminsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <wwwstatefarminsurance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <wwwstatefarminsurance.com> domain name.
3. Respondent registered and used the <wwwstatefarminsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a well-known insurance provider, which has operated under the name “State Farm” since 1930. Complainant registered its STATE FARM INSURANCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,125,010 issued September 11, 1979), and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA424,004 issued March 4, 1994). Complainant has operated its own website at the <statefarm.com> domain name since 1995.
Respondent registered the <wwwstatefarminsurance.com> domain name on October 11, 2003. Internet users accessing the <wwwstatefarminsurance.com> domain name are taken to an generic search-engine website featuring links to Complainant’s competitors, as well as pop-up advertisements.
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. 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.”).
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 INSURANCE mark, pursuant to Policy ¶ 4(a)(i), by registering the mark with the USPTO and CIPO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <wwwstatefarminsurance.com> domain name incorporates Complainant’s STATE FARM INSURANCE mark in its entirety, without spaces and with the addition of the letters “www.” Neither the removal of spaces nor the addition of the letters “www” in the disputed domain name distinguish it from Complainant’s mark. Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the 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”); 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 the complainant's NEIMAN-MARCUS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <wwwstatefarminsurance.com> domain name. Under Policy ¶ 4(a)(ii), when Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent uses a domain name that is confusingly similar to Complainant’s mark to redirect Internet users to a generic search-engine website, which features pop-up advertisements and links to services in competition with Complainant. The Panel presumes that Respondent receives payment in exchange for directing Internet users to other sites, and for exposing Internet users to advertisements. Such use is not 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 Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant asserts that it has not authorized Respondent’s use of the STATE FARM INSURANCE mark. Nothing in the WHOIS information indicates that Respondent is commonly known as <wwwstatefarminsurance.com>. Additionally, there is no evidence on record that Respondent is commonly known by the <wwwstatefarminsurance.com> domain name. The Panel infers that Respondent has not established rights or legitimate interests in the <wwwstatefarminsurance.com> name 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 interest where the respondent was not commonly known by the mark and never applied for a license or permission from the 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 Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wwwstatefarminsurance.com> domain name, which is confusingly similar to Complainant’s STATE FARM INSURANCE mark, to direct Internet users to websites that offer services from Complainant’s competitors, and expose Internet users to pop-up advertisements. The Panel infers that Respondent is taking advantage of confusion between the <wwwstatefarminsurance.com> domain name and Complainant’s STATE FARM INSURANCE mark for Respondent’s financial benefit. Such use amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Furthermore, Complainant contends that Respondent’s use of
the disputed domain name is likely to cause confusion among Internet users as
to Complainant’s sponsorship of or affiliation with the resulting website. The Panel finds that use of a typosquatted
variation of Complainant’s mark is further evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See 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,” which was evidence that the domain name
was registered and used in bad faith); see
also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan.
7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in
[Complainant’s] affiliate program, Respondent profits on the goodwill of
[Complainant’s] protected marks and primary Internet domain names,” which is
evidence of bad faith registration and use).
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 <wwwstatefarminsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 7, 2006
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