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Generic Top Level Domain Name (gTLD) Decisions |
State Farm Mutual Automobile Insurance
Company v. Albert Jackson
Claim
Number: FA0408000314119
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 Albert Jackson (“Respondent”),
PO Box 2014, George Town, Grand Cayman KY 40324-7014.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwstatefarminsurance.com>, registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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 (the "Forum")
electronically on August 17, 2004; the
Forum received a hard copy of the
Complaint on August 17, 2004.
On
August 17, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <wwwstatefarminsurance.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
August 20, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 9, 2004 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, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 14, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
Tyrus R. Atkinson, Jr.,
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 is a
nationally known company that has been doing business under the name “State
Farm” since 1930. Complainant engages
in business in both the insurance and the financial services industry. Complainant registered the STATE FARM
INSURANCE mark with the U.S. Patent and Trademark Office (“USPTO”) on September
11, 1979 (Reg.
No 1,125,010).
Respondent
registered the <wwwstatefarminsurance.com> domain name on October
11, 2003. The domain name resolves to a
website that provides links to websites that relate to 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.
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 through registration of the
mark with the USPTO. 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 rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Respondent’s <wwwstatefarminsurance.com>
domain name is confusingly similar to Complainant’s STATE FARM INSURANCE
mark because the domain name fully incorporates the mark
and merely adds the
“www” prefix and the generic top-level domain gTLD “.com” to the mark. Respondent’s addition of the “www” prefix
and the (gTLD) “.com” is insufficient to distinguish the <wwwstatefarminsurance.com>
domain name from the mark. See Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar
to 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 Complainant's NEIMAN-MARCUS mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant).
Furthermore, the
<wwwstatefarminsurance.com> domain name’s omission of the spaces
between the words in Complainant’s STATE FARM INSURANCE mark is insufficient to
distinguish the
domain name from the mark.
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2002) (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”); see
also Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response; therefore, the Panel may accept all reasonable
allegations and inferences in the Complaint
as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact
in the allegations of
Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply
to the Complaint).
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel
presumes that Respondent lacks rights and legitimate
interests in the <wwwstatefarminsurance.com>
domain name. 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 Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no
legitimate interest
in the domain names).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <wwwstatefarminsurance.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
In addition,
Respondent’s registration and use of the <wwwstatefarminsurance.com> domain
name constitutes typosquatting.
Respondent’s domain name takes advantage of Internet users who intend to
access Complainant online but mistakenly forget to place
a period between the
“www” prefix and Complainant’s mark.
Typosquatting itself is evidence that Respondent lacks rights and
legitimate interests in the domain name.
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 á vis
Complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
no rights or legitimate interests where Respondent used the typosquatted
<wwwdewalt.com>
domain name to divert Internet users to a search engine
webpage, and failed to respond to the Complaint).
Also, the Panel
infers that Respondent receives pay-per-click fees for referring Internet users
to insurance websites via the <wwwstatefarminsurance.com> domain
name. Thus, Respondent uses a domain
name confusingly similar to Complainant’s mark for commercial gain. Respondent’s use of the misleading domain
name for commercial gain does not fall within the parameters of Policy ¶¶
4(c)(i) or (iii). See Black &
Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24,
2002) (holding that Respondent’s use of the disputed domain name to redirect
Internet users
to commercial websites, unrelated to Complainant and presumably
with the purpose of earning a commission or pay-per-click referral
fee did not
evidence rights or legitimate interests in the domain name); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204
(WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous
MSNBC mark where Respondent attempted to
profit using Complainant’s mark by
redirecting Internet traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wwwstatefarminsurance.com>
domain name resolves to a website that provides links to insurance
websites. The Panel infers that
Respondent is using the confusingly similar domain name for commercial gain and
therefore concludes that Respondent
registered and used the domain name in bad
faith 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site
to its own website for commercial gain).
Furthermore,
Respondent’s typosquatting itself is evidence that Respondent registered and
used the <wwwstatefarminsurance.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See
RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003)
(inferring that Respondent’s registration of the <wwwremax.com> domain
name, incorporating
Complainant’s entire mark, was done with actual notice of
Complainant’s rights in the mark prior to registering the infringing domain
name, evidencing bad faith); 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 <wwwstatefarminsurance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 28, 2004
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