State Farm Mutual Automobile Insurance Company v. Todd Woods
Claim Number: FA0110000100489
Complainant is Mark O'Flaherty State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Mark O'Flaherty. Respondent is Todd Woods, Coalgate, OK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmroofing.com>, registered with Network Solutions, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 8, 2001; the Forum received a hard copy of the Complaint on October 9, 2001.
On October 9, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <statefarmroofing.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 2001 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 firstname.lastname@example.org 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 November 7, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 asserts the following:
Complainant has rights in the STATE FARM mark. The <statefarmroofing.com> domain name registered by Respondent is confusingly similar to Complainant's STATE FARM mark. Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered the disputed domain name and used it in bad faith.
B. Respondent did not file a Response in this proceeding.
Since 1930, Complainant has used the STATE FARM mark in relation to its insurance and financial services. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office on June 11, 1996. Over the years, Complainant has registered various other marks incorporating the STATE FARM name and for more than 70 years, Complainant has expended substantial efforts and funds to develop good will associated with the mark.
Complainant further has had a presence on the Internet since 1995 when it began using the domain name <statefarm.com>. Complainant's website offers a variety of services relating to insurance and financial services.
Respondent registered the disputed domain name May 14, 2001, but has not established a website at the disputed domain. Respondent has not been licensed to use and is not an authorized representative of Complainant and has no permission to use Complainant's STATE FARM mark in relation to marketing merchandise or distributing information.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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;
(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, through registration and continuous and extensive use has established that it has rights in the STATE FARM mark. Respondent's <statefarmroofing.com> domain name is confusingly similar to Complainant's mark. Respondent's domain name incorporates Complainant's mark in its entirety and merely adds the generic term "roofing." It has been held that the addition of a generic term to another's trademark does not create a distinctive mark. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS 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 the Complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights to and legitimate interests in its STATE FARM mark in this proceeding. Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <statefarmroofing.com> domain name. 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).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See 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”).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <statefarmroofing.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Furthermore, there is no evidence, and Respondent does not refute Complainant’s allegations that Respondent has no rights or legitimate interests in respect to the disputed domain name. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent acted in bad faith in registering and holding the domain name in issue. Because of the famous and distinctive nature of Complainant's STATE FARM mark, Respondent knew or should have known of the existence of Complainant's mark at the time Respondent registered the infringing domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Furthermore, the <statefarmroofing.com> domain name is confusing similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. As a result, registration of the confusingly similar <statefarmroofing.com> domain name is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
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 the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain name <statefarmroofing.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 19, 2001.
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