national arbitration forum

DECISION

State Farm Mutual Automobile Insurance v. Netsolutions Proxy Services

Claim Number:  FA0410000346761

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forest, One State Farm Plaza A-3, Bloomington, IL 61710.  Respondent is Netsolutions Proxy Services (“Respondent”), P.O. Box 9948, Tsuen Wan, Hong Kong, HK 00000 HK.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <statefarminsurnace.com>, <statefarminsuance.com>, <statefarminsurace.com>, <statefarminsuracne.com>, <statefarminsurane.com>, <statefarminssurance.com>, <statefarminsruance.com>, <statefarmisurance.com>, <statefarminusrance.com> and <statefarminsurrance.com>, registered with Fabulous.com Pty Ltd.

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2004.

On October 22, 2004, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the domain names <statefarminsurnace.com>, <statefarminsuance.com>, <statefarminsurace.com>, <statefarminsuracne.com>, <statefarminsurane.com>, <statefarminssurance.com>, <statefarminsruance.com>, <statefarmisurance.com>, <statefarminusrance.com> and <statefarminsurrance.com> are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 October 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@statefarminsurnace.com, postmaster@statefarminsuance.com, postmaster@statefarminsurace.com, postmaster@statefarminsuracne.com, postmaster@statefarminsurane.com, postmaster@statefarminssurance.com, postmaster@statefarminsruance.com, postmaster@statefarmisurance.com, postmaster@statefarminusrance.com and postmaster@statefarminsurrance.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 30, 2004, 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <statefarminsurnace.com>, <statefarminsuance.com>, <statefarminsurace.com>, <statefarminsuracne.com>, <statefarminsurane.com>, <statefarminssurance.com>, <statefarminsruance.com>, <statefarmisurance.com>, <statefarminusrance.com> and <statefarminsurrance.com> domain names are confusingly similar to Complainant’s STATE FARM INSURANCE mark.

2. Respondent does not have any rights or legitimate interests in the <statefarminsurnace.com>, <statefarminsuance.com>, <statefarminsurace.com>, <statefarminsuracne.com>, <statefarminsurane.com>, <statefarminssurance.com>, <statefarminsruance.com>, <statefarmisurance.com>, <statefarminusrance.com> and <statefarminsurrance.com> domain names.

3. Respondent registered and used the <statefarminsurnace.com>, <statefarminsuance.com>, <statefarminsurace.com>, <statefarminsuracne.com>, <statefarminsurane.com>, <statefarminssurance.com>, <statefarminsruance.com>, <statefarmisurance.com>, <statefarminusrance.com> and <statefarminsurrance.com> domain names in bad faith.

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

FINDINGS

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 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 following domain names between October 10 and October 15, 2004: <statefarminsurnace.com>, <statefarminsuance.com>, <statefarminsurace.com>, <statefarminsuracne.com>, <statefarminsurane.com>, <statefarminssurance.com>, <statefarminsruance.com>, <statefarmisurance.com>, <statefarminusrance.com>, and <statefarminsurrance.com>.  Each domain name resolves to a website that provides links to commercial websites relating to insurance. 

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 INSURANCE mark through registration with the USPTO and through the continuous use of the mark in commerce since 1930.  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 disputed domain names are all confusingly similar to Complainant’s STATE FARM INSURANCE mark because each individual domain name is identical to Complainant’s mark but for misspelled variations of the word “insurance.”  Such deliberate misspellings of famous marks do not diminish the confusing similarity between Complainant’s mark and Respondent’s domain names.  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

With some of the disputed domain names, such as <statefarminsruance.com> and <statefarminusrance.com>, Respondent merely transposed letters in Complainant’s mark.  Such transposition of letters is sufficient to support a finding of confusing similarity.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark).      

In other disputed domain names, such as <statefarminsurace.com> and <statefarminsuance.com>, Respondent merely deleted one letter from Complainant’s mark.  Such deletion of letters is also sufficient to support a finding of confusing similarity.  See State Farm Mut. Auto Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

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

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain names.  See 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); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain names.  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 names 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).

Moreover, Respondent’s registration and use of the disputed domain names constitutes typosquatting.  Respondent’s domain names take advantage of Internet users who intend to access Complainant online but mistakenly misspell the word “insurance.”  Typosquatting itself is evidence that Respondent lacks rights and legitimate interests in the domain names.  See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and < ltdcommodaties.com> disputed domain names were typosquatted versions of Complainant's LTD COMMODITIES mark and "Respondent's 'typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names."); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) ("Respondent's use of the <my-seasons.com> domain name constitutes typosquatting [of Complainant's MYSEASONS mark] and such conduct is evidence that Respondent lacks rights or legitimate interests in the domain name.").

Also, the Panel infers that Respondent receives pay-per-click fees for referring Internet users to insurance websites via the disputed domain names.  Thus, Respondent uses domain names confusingly similar to Complainant’s mark for commercial gain.  Respondent’s use of the misleading domain names 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.

Registration and Use in Bad Faith

Respondent’s disputed domain names resolve to a website that provides links to insurance websites.  The Panel infers that Respondent is using the confusingly similar domain names 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 disputed domains 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.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark. "Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).").

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 <statefarminsurnace.com>, <statefarminsuance.com>, <statefarminsurace.com>, <statefarminsuracne.com>, <statefarminsurane.com>, <statefarminssurance.com>, <statefarminsruance.com>, <statefarmisurance.com>, <statefarminusrance.com> and <statefarminsurrance.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  December 14, 2004

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