State Farm Mutual Automobile Insurance Company v. Patricia States
Claim Number: FA0609000796388
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company, One State Farm Plaza, A-3, Bloomington 61710. Respondent is Patricia States (“Respondent”), 1030 Baneberry Lane, Fair banks, AK 99712.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <www-statefarm.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2006.
On September 18, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <www-statefarm.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 September 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 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@www-statefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <www-statefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <www-statefarm.com> domain name.
3. Respondent registered and used the <www-statefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual, is an insurance company that has provided its services under the STATE FARM mark since 1930. Complainant holds a trademark registration for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent registered the <www-statefarm.com> domain name on May 16, 2006. The disputed domain name resolves to a website displays numerous sponsored links to various third-party 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 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 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 that it has rights in the STATE FARM mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the 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 [or] have acquired secondary meaning.”).
Complainant contends that the <www-statefarm.com> domain name is confusingly similar to its STATE FARM mark. The disputed domain name contains Complainant’s mark in its entirety and merely places “www” and a hyphen as a prefix to the mark. The use of the “www” followed by a hyphen (or “www dash”) prefix is merely a slight modification of the customary “www” followed by a period (or “www dot”) prefix found on most domain names. The Panel finds that the use of the “www dash” prefix does nothing to distinguish the disputed domain name from Complainant’s mark that is fully contained with the disputed domain name. See Sony Kabushiki Kaisha v. EOS1/EOS1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (finding the <www-sony.com> domain name to be confusing similar to the SONY mark); see also Amazon.com v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (find the <www-amazon.com> domain name to be confusingly similar to the AMAZON mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden of establishing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once the prima facie case is established, the burden then shifts to Respondent to prove otherwise. The Panel finds Complainant has successfully made a prima facie showing Respondent lacks rights and legitimate interests in the disputed domain names through its uncontested assertions on the record. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to submit a Response in this proceeding raises a presumption that Respondent lacks rights and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Nonetheless, the Panel chooses to analyze the evidentiary record to determine if Respondent has rights or legitimate interests in the disputed domain name.
According to the WHOIS registry, the registrant of the
disputed domain name is Patricia States of Fair Banks, Arkansas. Because the evidentiary record is otherwise
silent as to Respondent’s identity, the Panel finds that Respondent is not
commonly known by the <www-statefarm.com>
domain name, even though her last name is listed as “States.” See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent
is not commonly known by the [<awvacations.com>] domain name.”); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Additionally, the disputed domain
name resolves to a website that displays numerous sponsored links. The Panel finds that the use of a
confusingly similar domain name to resolve to a website that merely displays
sponsored links neither qualifies as a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (holding that the respondent’s use of the disputed domain name to host a
series of hyperlinks and a banner advertisement was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
domain name); see also Am. Online,
Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding that use of the complainant’s mark “as a portal to suck surfers into a
site sponsored by [the respondent] hardly seems legitimate”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered and used the disputed domain name in bad faith. The Panel infers that Respondent is commercially gaining from the use of the disputed domain name to resolve to a website that displays commercial advertisements. The addition of “www dash” before an otherwise unmodified mark is an obvious attempt to trade off of the goodwill associated with Complainant’s mark. The use of the “www dash” prefix constitutes typosquatting and evidences bad faith pursuant to generally pursuant to Policy ¶ 4(a)(iii). See Bank of Am Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (finding the respondent’s use of the <www-bankofamerica.com> domain name constituted typosquatting); see also InfoSpace, Inc. Greiner, FA 227653 (Nat. Arb. Forum Mar. 8, 2004) (finding that the use of the “www” prefix infers the respondent’s “actual knowledge of the underlying mark prior to the registration of the domain name”).
Furthermore, the use of a “www dash” domain name to resolve
to a website that features sponsored commercial advertising from which
Respondent presumably receives financial compensation evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb.
28, 2003) (finding that the respondent’s registration of an infringing domain
name to redirect Internet users to banner advertisements constituted bad faith
use of the domain name); see also Bama Rags, Inc. v. Zuccarini, FA 94381
(Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a
misspelling of the complainant’s famous mark to attract Internet users to a
series of advertisements).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <www-statefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 27, 2006
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