State Farm Mutual Automobile Insurance Company v. David Haan
Claim Number: FA0703000948470
Complainant is State
Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com>, registered with Go Daddy Software, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 28, 2007.
On March 28, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2007 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@statefarminscom.com, postmaster@wwstatefarm.com and postmaster@wwwstatefarmins.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names.
3. Respondent registered and used the <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is nationally known and has been using its STATE FARM mark in connection with its insurance goods and services since 1930. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for variations on its STATE FARM mark (e.g. Reg. No. 1,979,585 issued June 11, 1996).
Respondent registered the <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names on November 25, 2006. Respondent is using the disputed domain names to redirect Internet users to Respondent’s website located at the <ins-spot.com> domain name. Respondent’s website is parked with GoDaddy.com and displays links to third-party websites offering insurance goods and services in competition with Complainant. Links include “Homeowners Ins,” “Auto Ins” and “AIG Auto Insurance.”
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 holds a USPTO registration of its STATE FARM
mark, which it has used in commerce in the
Respondent’s <statefarminscom.com>,
<wwstatefarm.com> and <wwwstatefarmins.com> domain
names are confusingly similar to Complainant’s STATE FARM mark. All three disputed domain names include
Complainant’s STATE FARM mark in its entirety.
The disputed domain names then add extra letters either to the beginning
or the end of Complainant’s mark. The <statefarminscom.com>
and <wwwstatefarmins.com> domain names both add the letters
“ins” to Complainant’s mark. The letters
“ins” can be understood as an abbreviation for the term “insurance” which
describes Complainant’s business. In Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001), the
panel found that the <hoylecasino.net> domain name was confusingly
similar to the complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which the complainant was
engaged, did not take the disputed domain name out of the realm of confusing
similarity. Applied to the case at hand,
this Panel finds that the addition of the “ins” abbreviation to Complainant’s
mark does not distinguish the disputed domain names from that mark. Respondent’s domain names also add variations
of common Internet typographical errors, such as adding the letters “www,” “ww”
and “com” to Complainant’s mark. These
additions mimic errors in which Internet users fail to separate the “www”
prefix or the generic top-level domain “.com” from Complainant’s mark with a
period. The panel in Bank of America
Corporation v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000), explained
that the respondent’s domain name <wwwbankofamerica.com> was 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.” In this case, the Panel finds that
Respondent’s domain names are confusingly similar to Complainant’s mark because
the mimicry of typographical errors does not distinguish the disputed domain
names from the mark. Based on the above,
the Panel finds that Respondent’s disputed domain names are confusingly similar
to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names. Previous panels, for instance those in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and G.D. Searle v. Martin Marketing, FA 118277 (Nat. Arb. Forum Oct. 1, 2002), have found that a complainant’s assertions can constitute a prima facie case pursuant to the Policy resulting in the shifting of the burden to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names as contemplated by Policy ¶ 4(c). In this case, by declining to take advantage of the opportunity to submit a Response, Respondent deprived the Panel of evidence or arguments in support of its rights or legitimate interests. In American Express Company v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel stated that “based on respondent's failure to respond, it is presumed that respondent lacks all rights and legitimate interests in the disputed domain name.” In spite of this Panel’s concurrence with the reasoning of the American Express panel, it will nonetheless evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Respondent’s <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names redirect Internet users to Respondent’s website located at the <ins-spot.com> domain name. Respondent’s website is a GoDaddy.com parking page containing numerous links to third-party websites offering insurance goods and services in direct competition with Complainant. Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). Respondent is not offering any good or service of its own and is presumably collecting pay-per-click referral fees from the third-party links on its website. In Prestige Brands Holdings, Inc. v. The domain is not for sale, D2006-0608 (WIPO July 17, 2006), the panel found that registration of a domain name for no other reason than to sell it or connect it to a parking page does not establish rights or legitimate interests in the domain name. Similarly, in Computer Doctor Franchise System, Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000), the panel stated that the respondent’s website, which was blank but for links to other websites, was not a legitimate use of the domain names. Thus, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii).
There is no available evidence that Respondent is commonly known by any of the disputed domain names. The panel in Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) acknowledged that WHOIS information can be evidence that a respondent is not commonly known by a disputed domain name. In this case, Respondent’s WHOIS information identifies it as “David Haan,” a name with no obvious business or personal relationship to any of the disputed domain names. Under similar circumstances, the panel in America West Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) found that “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.” This Panel applies similar analysis in determining that Respondent is not commonly known by the disputed domain names and lacks rights or legitimate interests as contemplated by Policy ¶ 4(c)(ii).
In addition to failing to establish evidence of rights or legitimate interests under Policy ¶¶ 4(c)(i)-(iii), Respondent’s registration of typosquatted domain names is further evidence that Respondent lacks rights or legitimate interests. The panel in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) found that the 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.’” In this case, Respondent registered one domain name with the letters “www” affixed to the beginning of the domain name, a second domain name with “ww” affixed to the beginning of the domain name and a third domain name with “com” added at the end of the domain name, all of which are common typographical errors made by Internet users when typing domain names. In Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000), the panel found that fair use did not apply where the domain names were misspellings of the complainant's mark. Similarly, in National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), the panel stated that “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.” Based on the opinions of these previous panels, this Panel finds that Respondent’s typosquatting demonstrates further that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed
domain names to redirect Internet users to its website composed entirely of
links to third-party websites, including many direct competitors of
Complainant. The panel in 24
Hour Fitness
Respondent is using the <statefarminscom.com>,
<wwstatefarm.com> and <wwwstatefarmins.com> domain
names, which are confusingly similar to Complainant’s mark, to redirect
Internet users to its website at the <ins-spot.com> domain name. Because the disputed domain names are
typosquatted versions of Complainant’s mark, Internet users seeking
Complainant’s genuine website will be redirected to Respondent’s website instead
through the simple typographical error of failing to separate the letters “www”
or “com” from Complainant’s mark with a
period. Because of the confusing
similarity between the disputed domain names and Complainant’s mark, Internet
users may mistakenly believe that Respondent’s website is somehow related to or
affiliated with Complainant. Respondent
is presumably profiting from this confusion by collecting pay-per-click
referral fees. In
The Panel recognizes that circumstances other than those outlined in Policy ¶¶ 4(b)(i)-(iv) can demonstrate bad faith registration and use. As the panel in Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000), explained, “just because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [Policy ¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.” Specifically, the Panel finds that Respondent has engaged in typosquatting by registering domain names that reflect common typographical errors. The Panel’s finding is in accord with the approaches of previous panels. For example, in National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), the panel stated that “typosquatting … is the intentional misspelling of words with [the] 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.” Similarly, in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel held that the respondent’s “typosquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” The Panel finds Respondent’s typosquatting to be further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
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 <statefarminscom.com>, <wwstatefarm.com> and <wwwstatefarmins.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 9, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum