State Farm Mutual Automobile Insurance Company v. NetTrafficBuilders c/o Jose Ward
Claim Number: FA0806001212774
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
NAMES
The domain names at issue are <statefarmtampa.mobi>, <statefarmtampa.net> and <statefarmtampa.org>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2008.
On June 26, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmtampa.mobi>, <statefarmtampa.net> and <statefarmtampa.org> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 July
7, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of July
28, 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@statefarmtampa.mobi, postmaster@statefarmtampa.net,
postmaster@statefarmtampa.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a national company that has operated its business since 1930.
Complainant has operated under the STATE FARM service mark (Reg. No. 1,979,585, issued June 11, 1996), which is registered with the United States Patent and Trademark Office (“USPTO”).
Complainant also owns and operates the <statefarm.com> domain name in connection with its business.
Respondent registered the <statefarmtampa.mobi>, <statefarmtampa.net> and <statefarmtampa.org> domain names on April 30, 2008.
The disputed domain names all resolve to websites that host third-party advertisements for Complainant’s business competitors.
Complainant has sent several cease-and-desist letters to Respondent, in response to which Respondent offered to sell the disputed domain names to Complainant.
Respondent’s answer to Complainant’s final demand letter was an offer to sell the domain names for $9,000.00.
Respondent’s domain names <statefarmtampa.mobi>, <statefarmtampa.net> and <statefarmtampa.org> are confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights to or legitimate interests in these domain names.
Respondent registered and uses the <statefarmtampa.mobi>, <statefarmtampa.net> and <statefarmtampa.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a 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 names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s service mark registration with the USPTO for the STATE FARM mark confers upon it sufficient rights in the mark for purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a complainant’s registration of the DISNEY trademark with the USPTO prior to a respondent’s registration of a disputed domain name is sufficient to establish that complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had rights in the BLOOMBERG mark through its registration with the United States Patent and Trademark Office).
Respondent’s domain names <statefarmtampa.mobi>, <statefarmtampa.net> and <statefarmtampa.org> all incorporate Complainant’s entire STATE FARM mark, merely adding the geographical qualifier “tampa,” and the top-level domains “.mobi,” “.net,” or “.org.” Top-level domains are irrelevant under Policy ¶ 4(a)(i) because every domain name must have one. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007):
The
suffix .mobi should be treated the same way as .com and should be ignored when
comparing the mark and the disputed domain name.
Moreover, the geographical qualifier “tampa,” presumably
represents the city of Tampa Bay, FL, the state in which Respondent
resides. Domain names incorporating a
mark and a geographic locale tend to cause confusion for Internet users, in
that they perceive the respondent to be merely one of Complainant’s locations
for business. Thus we conclude that the
disputed domain names are confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding the domain name <cmgiasia.com> confusingly similar
to a complainant’s CMGI mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant has set forth a sufficient prima facie case supporting this
allegation. Therefore Respondent acquires
the burden of showing that it nonetheless has such rights or interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that, once a prima facie case has been established by the
complainant under Policy ¶ 4(c), the burden shifts to a respondent to
demonstrate its rights or legitimate interests in a disputed domain name).
Because Respondent has failed to reply to the Complaint, we are free to presume that Respondent lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
We will nonetheless examine the record in light of the
elements listed in Policy ¶ 4(c) to determine if there is any basis for
concluding that Respondent has rights to or interests in its domain names
sufficient to satisfy the Policy.
We begin by noting that there is no information in the record to suggest that Respondent is commonly known by the disputed domain name. Moreover, the pertinent WHOIS information lists the disputed domain names’ registrant of record as “NetTrafficBuilders c/o Jose Ward.” Therefore, we conclude that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that that respondent is commonly known by the domain); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that a respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and that respondent did not counter this fact in its response).
We also take note of Complainant’s undenied allegation to
the effect that Respondent is using the disputed domain names to resolve to
websites that display commercial links to Complainant’s business competitors,
which we presumes benefits Respondent via the receipt of referral fees. This is 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 Disney
Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding
that the operation of a pay-per-click website at a confusingly similar domain
name was not 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 also
Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if a respondent is
itself commercially profiting from the click-through fees).
It is also
pertinent that Respondent does not deny Complainant’s assertion that Respondent
has offered to sell the disputed domain names to Complainant for the sum of
$9,000.00, an amount far in excess of the registration costs for the disputed
domain names. Therefore, we conclude that
Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to
sell a domain name to a complainant suggests that that respondent has no rights
or legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (holding that where a respondent makes a “disproportionate” offer to sell
its domain name registration to a complainant for more than its out-of-pocket
registration costs, this is evidence that that respondent lacks rights and
legitimate interests in the domain).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have found that Respondent has offered to sell the
disputed domain names to Complainant for a price of $9,000.00. This excessive offer to sell demnstrates bad
faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding a
respondent’s offer to sell a domain name for $2,000 sufficient evidence of bad
faith registration and use under Policy ¶ 4(b)(i)); see also Campmor,
Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003):
“Respondent registered the disputed domain name and offered to sell it to
Complainant for $10,600. This demonstrates bad faith registration and use
pursuant to Policy ¶ 4(b)(i).”
We have also found that the
disputed domain names resolve to websites that host commercial links for
Complainant’s competitors, which is likely to drive away business from, and
thus disrupt, Complainant’s operations.
Respondent has therefore engaged in bad faith registration and use of
the disputed domains under Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding that a respondent registered the domain name there in
question to disrupt the business of a complainant, a competitor of that
respondent); see also David Hall Rare Coins
v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarmtampa.mobi>, <statefarmtampa.net> and <statefarmtampa.org> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 11, 2008
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