national arbitration forum

 

DECISION

 

State Farm Mutual Automobile v. State Farm c/o Sam Rains

Claim Number: FA0802001145900

 

PARTIES

Complainant is State Farm Mutual Automobile (“Complainant”), represented by Debra J. Monke, of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is State Farm c/o Sam Rains (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmsamrains.com>, registered with Dotster.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 18, 2008.

 

On February 15, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <statefarmsamrains.com> domain name is registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 February 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 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 postmaster@statefarmsamrains.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <statefarmsamrains.com> domain name is confusingly similar to Complainant’s STATE FARM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <statefarmsamrains.com> domain name.

 

3.      Respondent registered and used the <statefarmsamrains.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, State Farm Mutual Automobile, has conducted business under the STATE FARM mark since 1930.  Complainant offers a wide variety of goods and services under the mark, including automobile insurance.  Complainant holds numerous registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (i.e. Reg. No. 1,979,585 issued June 11, 1996).

 

Respondent registered the <statefarmsamrains.com> domain name on March 21, 2007.  Respondent is not currently making any active use of the disputed domain name. 

 

Complainant employs an insurance agent by the name of Sam Rains.  However, Complainant has determined through an internal investigation that Mr. Rains did not register the disputed domain name.  Thus, Respondent has provided false WHOIS information.

 

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.  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.

 

Identical and/or Confusingly Similar

 

Complainant alleges rights to the STATE FARM mark based upon its numerous trademark registrations and use in commerce since 1930.  Based on this evidence, many previous panels have recognized Complainant’s rights in the mark.  See State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Nat. Arb. Forum Sept. 25, 2007) (finding that “[t]here can be no doubt that STATE FARM is a very famous mark, and Complainant has clearly established rights in the [mark]” pursuant to Policy ¶ 4(a)(i) based upon its numerous federal trademarks and use in commerce since 1930); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).  Therefore, the Panel easily recognizes Complainant’s rights in the STATE FARM mark for the purposes of Policy ¶ 4(a)(i).

 

Respondent’s <statefarmsamrains.com> domain name contains Complainant’s STATE FARM mark in its entirety, which constitutes the dominant portion of the disputed domain name.  The addition of “Sam Rains” without the space adds to the confusing similarity because Mr. Rains is an insurance agent employed by Complainant.  The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant since all domain names require a top-level domain.  Therefore, the Panel finds that Respondent’s <statefarmsamrains.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).  See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <statefarmsamrains.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). 

 

Based upon the evidence in the record, the Panel is relying on the facts presented in the Complaint.  Respondent had an opportunity to respond and present its own set of facts or allegations, but did not.  The Panel finds that Complainant’s submissions were comprehensive and convincing.  Therefore, considering Respondent’s failure to respond to the Complaint, and absent any evidence to the contrary, the Panel accepts the allegations made in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  While not required to do so, the Panel will examine the evidence in the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the <statefarmsamrains.com> domain name, and is not associated with, affiliated with, or sponsored by Complainant, the owner of the STATE FARM mark.  Furthermore, Complainant did not authorize Respondent to use its mark in a domain name.  While the WHOIS information lists Respondent as “State Farm c/o Sam Rains,” Complainant has determined through an internal investigation that its employee, Sam Rains, did not register the <statefarmsamrains.com> domain name.  Therefore, Respondent has provided false WHOIS information.  That being said, there is no evidence in the record to determine that Respondent is commonly known by the disputed domain name.  Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <statefarmsamrains.com> domain name pursuant to Policy ¶ 4(c).  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).

 

Complainant alleges that Respondent has not made any active use of the <statefarmsamrains.com> domain name.  Respondent’s failure to use the disputed domain name inherently does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).

 

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

 

Registration and Use in Bad Faith

 

Respondent has failed to make any active use of the <statefarmsamrains.com> domain name.  Therefore, Respondent’s registration and use constitutes bad faith pursuant to Policy ¶ 4(a)(iii).  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failing to use a domain name permits an inference of registration and use in bad faith); 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).

 

Aside from Respondent’s failure to use the disputed domain name, the Panel notes that Respondent provided false WHOIS information.  This evidence also indicates that Respondent’s registration and use constitutes bad faith pursuant to Policy ¶ 4(a)(iii).  See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).

 

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 <statefarmsamrains.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  April 1, 2008

 

 

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