DECISION

State Farm Mutual Automobile Insurance Company v. Chen Huang

Claim Number:  FA0404000267252

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), is represented by Janice K. Forrest, One State Farm Plaza A3, Bloomington, IL 61710.  Respondent is Chen Huang  (“Respondent”), Post Office Box 20231, Zengdu, Guangzhou 34264, China 65487.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarminsuarance.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 30, 2004; the Forum received a hard copy of the Complaint on April 30, 2004.

On May 3, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <statefarminsuarance.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 May 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 25, 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@statefarminsuarance.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 June 1, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <statefarminsuarance.com> domain name is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks.

2. Respondent does not have any rights or legitimate interests in the <statefarminsuarance.com> domain name.

3. Respondent registered and used the <statefarminsuarance.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant State Farm Mutual Automobile Insurance Company is in the business of providing insurance and financial services.

Complainant holds trademark registrations with the United States Patent and Trademark Office for the STATE FARM mark and the Three Oval design associated with STATE FARM INSURANCE (Reg. No. 1,979,585 issued June 11, 1996, Reg. No. 1,125,010 issued September 11, 1979, and Reg. No. 1,087,834 issued March 21,1978).  In Canada, Complainant has registered the STATE FARM mark and the Three Oval design; in the European Community, Complainant has registered the Three Oval design; and, in Mexico, Complainant has registered the STATE FARM mark and the Three Oval design.

Complainant has operated a chain of STATE FARM insurance offices since 1930.  Currently, Complainant insures more than 40 million cars and almost 15.6 million homes in the United States and Canada.  Complainant also offers banking products and mutual funds through affiliated companies. Complainant has used the STATE FARM mark continuously and extensively since 1930 in advertising promotions.  Thus, the STATE FARM mark enjoys a high degree of recognition in the world.

Complainant’s main website is operated at the <statefarm.com> domain name.

Respondent registered the disputed domain name on October 15, 2003.  Respondent is using the domain name to redirect Internet users to a website that features advertising for a variety of goods and hosts a search engine to link viewers to a variety of websites, predominantly including sites that offer the same type of services that Complainant offers.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the STATE FARM and STATE FARM INSURANCE marks through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for the last seventy-four and twenty-five years, respectively.  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 Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place.

Respondent’s domain name is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks.  The <statefarminsuarance.com> domain name is confusingly similar because the domain name incorporates Complainant’s marks and simply uses a misspelled version of the word “insurance.”  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term; see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist.

Respondent is using the <statefarminsuarance.com> domain name to redirect Internet users to a website that features advertising for a variety of goods and hosts a search engine to link viewers to a variety of websites, including sites that offer the same type of services that Complainant offers both in its STATE FARM offices and online.  Respondent’s use of the domain name, which is confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks, to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and links to insurance related websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"; see also Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) finding no rights or legitimate interest in a misspelled domain name as Respondent was merely using it to redirect Internet users to, inter alia, an online casino; see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names.

 

Moreover, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <statefarminsuarance.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) stating that “[d]ue to the fame of Complainant’s FOOT LOCKER family of marks…and the fact that Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by” any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”; see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>.

  

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered a domain name that contains in its entirety Complainant’s well-known mark and did so for Respondent’s commercial gain.  Respondent’s domain name diverts Internet users seeking Complainant’s services to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s marks.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s STATE FARM and STATE FARM INSURANCE marks.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and us pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness; see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also 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).

Respondent is using the disputed domain name to advertise a search engine and links to insurance-related websites.  Complainant’s business provides insurance and financial services.  The Panel finds that, by creating confusion around Complainant’s marks Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s marks to sell services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area; see also 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.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <statefarminsuarance.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  June 15, 2004

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