State Farm Mutual Automobile Insurance Company v. BlueWater Inc c/o Randy Edwards
Claim Number: FA0803001163330
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <delegadostatefarm.com>, <delegadostatefarm.info>, <delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>, <statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>, <statefarmfloridaonline.com>, <statefarmnaples.com> and <statefarmnaples.net>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 12, 2008 and March 24, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <delegadostatefarm.com>, <delegadostatefarm.info>, <delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>, <statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>, <statefarmfloridaonline.com>, <statefarmnaples.com> and <statefarmnaples.net> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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@delegadostatefarm.com, postmaster@delegadostatefarm.info, postmaster@delegadostatefarm.net, postmaster@statefarmflorida.biz, postmaster@statefarmflorida.com, postmaster@statefarmflorida.info, postmaster@statefarmflorida.net, postmaster@statefarmfloridahome.com, postmaster@statefarmfloridaonline.com, postmaster@statefarmnaples.com, and postmaster@statefarmnaples.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <delegadostatefarm.com>, <delegadostatefarm.info>, <delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>, <statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>, <statefarmfloridaonline.com>, <statefarmnaples.com> and <statefarmnaples.net> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <delegadostatefarm.com>, <delegadostatefarm.info>, <delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>, <statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>, <statefarmfloridaonline.com>, <statefarmnaples.com> and <statefarmnaples.net> domain names.
3. Respondent registered and used the <delegadostatefarm.com>, <delegadostatefarm.info>, <delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>, <statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>, <statefarmfloridaonline.com>, <statefarmnaples.com> and <statefarmnaples.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a national insurance and financial services provider. Since 1930, Complainant has operated under the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996), which was filed with the United States Patent and Trademark Office (“USPTO”). Complainant opened a federally chartered bank known as “State Farm Bank” in 1999, and has spent substantial time, effort, and funds to develop the goodwill associated with Complainant’s mark over the past 70 years. Complainant owns and operates the <statefarm.com> domain name in conjunction with its business operations.
Respondent registered the <delegadostatefarm.com>, <delegadostatefarm.info>,
<delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>,
<statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>,
<statefarmfloridaonline.com>, <statefarmnaples.com>
and <statefarmnaples.net> domain names 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 has provided evidence of registration of its
STATE FARM mark with the USPTO. The
Panel finds that this serves as sufficient evidence of Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("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."); see also Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent’s <delegadostatefarm.com>, <delegadostatefarm.info>,
<delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>,
<statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>,
<statefarmfloridaonline.com>, <statefarmnaples.com>
and <statefarmnaples.net> domain names all include
Complainant’s entire STATE FARM mark, along with the top-level domains “.com,”
“.info,” “.net,” and “.biz,” along with generic words such as “online,”
“delegado,” and “home,” and geographic qualifiers such “Florida,” and “Naples.” The inclusion of top-level domains are
considered wholly irrelevant under a Policy ¶ 4(a)(i)
analysis. Moreover, generic words
generally fail to render a disputed domain name distinct, especially when the
dominant feature of a disputed domain name remains a complainant’s mark. This is precisely the scenario here, as
Complainant’s mark remains the principal component of each and every disputed
domain name in this case. Finally, the addition
of a geographic term continually is found to fail in rendering a disputed
domain name distinct. To wit, the
addition of “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant has therefore met its burden of
asserting a prima facie case
supporting its allegations, and thus Respondent receives the burden of
demonstrating its rights or legitimate interests under Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
None of Respondent’s disputed domain names resolve to any
sort of operating website. Respondent
cannot point to any evidence within the record that suggests a demonstrable
preparation to develop or use these disputed domain names with any
corresponding websites. In this regard,
the Panel finds that this inactive use of the disputed domain names fails to
constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), which in turn
demonstrates Respondent’s lack of rights and legitimate interests under Policy
¶ 4(a)(ii). See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001)
(finding no rights or legitimate interests where “Respondent registered the
domain name and did nothing with it”); see
also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“Merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Respondent has failed to allege any evidence to suggest that
it is commonly known by any of the disputed domain names. The WHOIS domain name registration
information lists the registrant of the disputed domain names as “BlueWater
Inc. c/o Randy Edwards,” which does not
in any way imply that Respondent is commonly known by the disputed domain
names. Therefore, the Panel finds
Respondent has no rights or legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Upon Complainant’s demand that Respondent transfer the
confusingly similar disputed domain names, Respondent countered with a request
of $500.00 in return for transfer of the disputed domain names. Complainant complied with this request,
though Respondent has not transferred the disputed domain names. The Panel finds that Respondent’s offer sell
the disputed domain names is itself evidence of its bad faith registration and
use under Policy ¶ 4(b)(i), especially in light of the fact that Respondent has
made no use or plans to develop the disputed domain names. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also Universal City Studios, Inc. v. Meeting Point Co.,
D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the respondent made no
use of the domain names except to offer them to sale to the complainant).
In this case Respondent registered 11 disputed domain names
of various form, all wholly incorporating Complainant’s STATE FARM mark. Due to Respondent’s actions, Complainant has
thereby been deprived of the opportunity to reflect its mark within these 11 disputed
domain names. The Panel therefore finds
that Respondent has engaged in bad faith registration and use of the disputed
domain names under Policy ¶ 4(b)(ii). Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum
In the entire time of Respondent’s ownership of the disputed
domain names, it has made no demonstrable preparations to use the disputed
domain names. The Panel finds that
Respondent’s inactive use of the disputed domain names constitutes bad faith
registration and use under 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 the inactive use of a domain name permits an
inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec.
7, 2000) (concluding that the respondent’s inactive use of the domain name
satisfies the requirement of ¶ 4(a)(iii) of the Policy)
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 <delegadostatefarm.com>, <delegadostatefarm.info>, <delegadostatefarm.net>, <statefarmflorida.biz>, <statefarmflorida.com>, <statefarmflorida.info>, <statefarmflorida.net>, <statefarmfloridahome.com>, <statefarmfloridaonline.com>, <statefarmnaples.com> and <statefarmnaples.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 25, 2008
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