Wwwstatefarm.net

The timeline behind wwwstatefarm.net

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION State Farm Mutual Automobile Insurance Company v. WWW Enterprise, Inc. Claim Number: FA0503000444370 PARTIES 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 WWW Enterprise, Inc. (“Respondent”), P.O. Box 118, 5850 West Third Street, Los Angeles, CA 90036. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <wwwstatefarm.net>, registered with Onlinenic, Inc.. PANEL 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. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 21, 2005. On March 21, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <wwwstatefarm.net> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 March 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 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@wwwstatefarm.net 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 April 18, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <wwwstatefarm.net> domain name is confusingly similar to Complainant’s STATE FARM mark. 2. Respondent does not have any rights or legitimate interests in the <wwwstatefarm.net> domain name. 3. Respondent registered and used the <wwwstatefarm.net> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, State Farm, is a nationally known company that has been engaged in business in both the insurance and the financial services industry since 1930. Complainant has used the STATE FARM mark since 1930. State Farm developed its Internet presence in 1995. Complainant has invested a substantial amount of money, time and effort in developing its website as a primary source of Internet information for the products and services it offers. Complainant has registered numerous marks with the United States Patent and Trade Office (“USPTO”), including Reg. Nos. 1,979,585 (issued June 11, 1996); 2,319,867 (issued February 15, 2000); 2,198,246 (issued October 20, 1998); 2,174,935 (issued July 21, 1998); 1,579,406 (issued January 23, 1990); 2,296,986 (issued November 30, 1999) and 1,220,284 (issued December 14, 1982). Complainant has used the STATE FARM mark continuously in commerce since 1930. Respondent registered the <wwwstatefarm.net> domain name on March 1, 2005. Respondent’s domain name resolves to a website displaying numerous links to other websites offering insurance and financial services products in competition with Complainant. 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 rights in the STATE FARM mark through registration of the mark with the USPTO and through the continuous use of the mark in commerce since 1930. 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.”). Respondent’s <wwwstatefarm.net> domain name is identical to Complainant’s STATE FARM mark. The mere addition of the “www” prefix and the generic top-level domain “.net” is not enough to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(iii). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to Complainant’s famous NIKE mark); 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 Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has failed to respond the Complaint. Therefore, the Panel may accept all reasonable assertions and allegations set forth by Complainant as true and accurate. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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.”). Complainant has asserted that Respondent has no rights or legitimate interests in the disputed domain name, and Respondent, in not submitting a response, has failed to rebut this assertion. Thus, the Panel may interpret Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the <wwwstatefarm.net> domain name pursuant to Policy ¶ 4(a)(ii). 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 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.”). Respondent is using the domain name to operate a website that features links to competing insurance-related sites. Such use is not in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); 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). Furthermore, nothing in the record indicates that Respondent is commonly known by the <wwwstatefarm.net> domain name or is authorized to register domain names incorporating Complainant’s STATE FARM mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has registered and used the <wwwstatefarm.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by using the domain name, which contains a confusingly similar version of Complainant’s STATE FARM mark, to market competing insurance-related websites. See 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); see also 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). Furthermore, Respondent is capitalizing on the goodwill of the STATE FARM mark by using the disputed domain name to divert Internet users to a website featuring links to competing insurance-related websites. The Panel infers that Respondent receives click- through fees for redirecting Internet users to the competing websites. Since the disputed domain contains Complaint’s mark, consumers searching for Complainant could become confused as to Complainant’s affiliation with the resulting website. Therefore, Respondent’s opportunistic use of the <wwwstatefarm.net> domain name 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 Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website). Furthermore, Respondent registered the <wwwstatefarm.net> domain name with actual or constructive knowledge of Complainant’s STATE FARM mark due to Complainant’s registration of the mark with the USPTO and the international renown that Complainant’s mark has acquired. Moreover, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark due to the obvious connection between Complainant and the content featured on Respondent’s website. Thus, the Panel finds that Respondent registered and used the <wwwstatefarm.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int'l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ("[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively."); see also Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”). Moreover, Respondent's typosquatting itself is evidence that Respondent registered and used the <wwwstatefarm.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“In typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing [<wwwmedline.com>] domain name.”); see also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith). 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 <wwwstatefarm.net> domain name be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: May 16, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.