national arbitration forum

DECISION

State Farm Mutual Automobile Insurance Company v. LaPorte Holdings, Inc.

Claim Number:  FA0412000374616

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL, 61710.  Respondent is LaPorte Holdings, Inc. (“Respondent”), Attn: onlinestatefarm.com, Attn:statefarmerinsurance.com, c/o Nameking, Inc., 2202 S. Figueroa Street, Suite 721, Los Angeles, CA, 90023.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <onlinestatefarm.com> and <statefarmersinsurance.com>, registered with Nameking.com, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 6, 2004; the National Arbitration Forum received a hard copy of the Complaint December 6, 2004.

On December 6, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <onlinestatefarm.com> and <statefarmersinsurance.com> are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names.  Nameking.com, Inc. verified that Respondent is bound by the Nameking.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2005, 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@onlinestatefarm.com and postmaster@statefarmersinsurance.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 January 10, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <onlinestatefarm.com> and <statefarmersinsurance.com>, are confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks.

2. Respondent has no rights to or legitimate interests in the <onlinestatefarm.com> and <statefarmersinsurance.com> domain names.

3. Respondent registered and used the <onlinestatefarm.com> and <statefarmersinsurance.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 STATE FARM and STATE FARM INSURANCE marks since 1930.  Complainant engages in business in both the insurance and the financial services markets.  Complainant is a leading provider of automobile insurance and has been since 1942.  Complainant also has established a nationally recognized presence on televised and other media.

Complainant registered the STATE FARM (Reg. No. 1,979,585 issued June 11, 1996) and STATE FARM INSURANCE marks (Reg. No. 1,125,010 issued September 11, 1979) with the United States Patent and Trademark Office (“USPTO”).

Respondent registered the <statefarmersinsurance.com> domain name October 13, 2004, and the <onlinestatefarm.com> domain name October 25, 2004.  Both domain names resolve to a website featuring links to competing insurance companies.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the STATE FARM and STATE FARM INSURANCE marks by registration with the USPTO and through continuous use of the marks in commerce.  See 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.); 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 and have acquired secondary meaning.”).

The domain name that Respondent registered, <onlinestatefarm.com>, incorporates Complainant’s STATE FARM mark in its entirety and merely adds the generic term “online.”  The addition of the term “online” to Complainant’s mark is insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also 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).

The second domain name that Respondent registered, <statefarmersinsurance.com>, incorporates Complainant’s STATE FARM INSURANCE mark in its entirety and merely changes the term “farm” to “farmers.”  The slight alteration by a misspelling is not enough to overcome a finding of confusing similarity between Respondent’s domain name and Complainant’s mark, pursuant to Policy ¶ 4(a)(i).  See 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); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to Complainant’s famous AMERICA ONLINE mark).

Furthermore, Respondent’s domain names merely add the generic top-level domain “.com” to Complainant’s marks while omitting the spaces between the words in Complainant’s marks.  Such minor changes are not enough to negate the confusing similarity between the disputed domain names and Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (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”).

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

Rights to or Legitimate Interests

Complainant established that it has legal and common law rights in the marks contained within the disputed domain names and has alleged that Respondent has no such rights.  Respondent did not respond to the Complaint.  Complainant has made a prima facie showing.  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 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 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 <onlinestatefarm.com> and <statefarmersinsurance.com> domain names.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); 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 marks.  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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the notion that a respondent is commonly known by a domain name, the notion must be rejected).

Respondent used the <onlinestatefarm.com> and <statefarmersinsurance.com> domain names to direct Internet users to competing insurance services.  Such use of domain names that are confusingly similar to Complainant’s STATE FARM and STATE FARM INSURANCE marks is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

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

Registration and Use in Bad Faith

Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by registering domain names that are confusingly similar to Complainant’s marks and using them to market competing insurance services.  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); 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).

Furthermore, Respondent is capitalizing on the goodwill associated with the STATE FARM and STATE FARM INSURANCE marks by using the <onlinestatefarm.com> and <statefarmersinsurance.com> domain names to divert Internet users to a website featuring links to competing insurance services.  Since the disputed domain names contain confusingly similar versions of Complainant’s marks, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting website.  In addition, the Panel infers that Respondent receives click-through fees for redirecting Internet users to these competing websites.  Therefore, Respondent’s opportunistic use of the disputed domain names represents bad faith registration and use under 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).

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 <onlinestatefarm.com> and <statefarmersinsurance.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 24, 2005

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