State Farm Mutual Automobile Insurance Company v. Umpires TV Radio c/o David Yorke
Claim Number: FA0803001169440
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmrulesbaseball.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 26, 2008.
On March 25, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <statefarmrulesbaseball.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@statefarmrulesbaseball.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmrulesbaseball.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmrulesbaseball.com> domain name.
3. Respondent registered and used the <statefarmrulesbaseball.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Co., offers insurance and financial services. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585).
Respondent registered the <statefarmrulesbaseball.com> domain name on September 29, 2007. Respondent is using the disputed domain name to redirect Internet users to a website sponsored by Verio, a telecommunications company, offering domain name registrations and web hosting services. Respondent has offered to sell the disputed domain name to Complainant.
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.
The Panel finds that Complainant’s registration of the STATE
FARM mark with the USPTO establishes Complainant’s rights to the mark under
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 Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
The <statefarmrulesbaseball.com>
domain name
is confusingly similar to Complainant’s STATE FARM mark because it incorporates
the two terms of Complainant’s mark and adds two generic terms. The addition of the generic terms “rules” and
“baseball” are insufficient to distinguish the disputed domain name from the
STATE FARM mark. The panel in Arthur
Guinness Son & Co. (
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden of demonstrating that Respondent lacks all rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the domain name. In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the disputed domain name, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” Here, the Panel finds that Complainant has established a prima facie case, and therefore the burden shifts to Respondent. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint allows the Panel to presume that Respondent lacks all rights and legitimate interests. The Panel, however, will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). 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).
Complainant contends that it has never authorized Respondent to use the STATE FARM mark. Complainant further asserts that the WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a disputed domain name when the respondent was not known by the mark. Thus, the Panel concludes that Respondent is not known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is currently using the disputed domain name to redirect Internet users to a website where domain names can be registered and web hosting services are offered. The Panel considers this unrelated use of the disputed domain name to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Complainant asserts that Respondent offered to sell the
disputed domain name to Complainant after Respondent’s project with the
disputed domain name had been finished, requesting compensation for the <statefarmrulesbaseball.com> domain
name and activities related to the disputed domain name. The panel in American National Red Cross v. Domains,
FA 143684 (Nat. Arb. Forum Mar. 4, 2003) held that “Respondent’s lack of
rights and legitimate interests in the domain name is further evidenced by
Respondent’s attempt to sell its domain name registration to Complainant, the
rightful holder of the RED CROSS mark.”
Here, the Panel concludes that Respondent’s offer to sell is additional
evidence that Respondent lacks rights and legitimate interests in the <statefarmrulesbaseball.com> domain
name under Policy ¶ 4(a)(ii). See Cruzeiro
Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding
that rights or legitimate interests do not exist when one holds a domain name
primarily for the purpose of marketing it to the owner of a corresponding
trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to redirect
Internet users to an unrelated commercial website is evidence of registration
and use in bad faith. Respondent is
benefiting from the goodwill associated with Complainant’s STATE FARM mark, and
its use of the disputed domain name is capable of creating confusion as to
Complainant’s source, sponsorship, affiliation, and endorsement of the website
that resolves from the <statefarmrulesbaseball.com>
domain name. The Panel concludes that
Respondent’s use demonstrates registration and use in bad faith under Policy ¶
4(b)(iv). See Bank
of Am. Corp. v.
The Panel also concludes that Respondent’s offer to sell the disputed domain name to Complainant demonstrates registration and use in bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmrulesbaseball.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 29, 2008
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