State Farm Mutual Automobile Insurance Company v. statefarmrecruiting.com c/o BlueHost.com Domain Privacy
Claim Number: FA0801001140628
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmrecruiting.com>, registered with Fastdomain, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmrecruiting.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmrecruiting.com> domain name.
3. Respondent registered and used the <statefarmrecruiting.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, has been a nationally known insurance company since 1930. Complainant offers insurance services with a substantial presence on the Internet. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) ( Reg. No.1,979,585 issued June 11, 1996). Complainant also operates a website at the <statefarm.com> domain name.
Respondent registered the disputed domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
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.
Complainant registered the STATE FARM mark with the USPTO,
and therefore, established rights to the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
Complainant contends that the <statefarmrecruiting.com> domain name is confusingly similar to the STATE FARM mark. Respondent’s addition of the generic term “recruiting” to the registered mark is insufficient to distinguish the disputed domain name from the registered mark because the generic term describes Complainant’s business. In addition, because all domain names are required to have a top-level domain, Respondent’s use of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from Complainant’s registered mark. Therefore, the Panel finds that the <statefarmrecruiting.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant
has the initial burden of showing Respondent does not have rights or legitimate
interests in the disputed domain name.
Once Complainant has made a prima
facie case showing that Respondent lacks rights and legitimate interests,
the burden shifts to Respondent to show that it does have rights or legitimate
interests in the <statefarmrecruiting.com> domain name. The Panel finds that Complainant has met the
initial burden of showing that Respondent lacks rights and legitimate
interests, and therefore has made a prima
facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been
authorized to use the STATE FARM mark, and that Respondent is not and has never
been commonly known by the disputed domain name. Although it appears that Respondent is
commonly known by the disputed domain name based on the WHOIS registration,
there is no other fact in the record that indicates that it is the case. Therefore, the Panel finds Respondent is not
commonly known by the disouted domain name.
See Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17,
2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Complainant alleges that Respondent has failed to use the
disputed domain name since its registration in 2007. The Panel finds that no signs of preparation
to use is evidence of a lack of rights or legitimate interests pursuant to
Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See AT&T Corp. v. Domains by Brian Evans,
D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests
where the respondent alleged that it intended to use the domain name
<attweb.com> for a company called “At the Web” but failed to provide any
evidence as to the existence of the company); see also LFP, Inc. v. B &
J Props., FA 109697 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is not currently making an active use of the disputed domain name. Failure to make an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmrecruiting.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 25, 2008
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