State Farm Mutual Automobile Insurance Company v.
Claim Number: FA0811001232813
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 <statefarmdlp.net>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2008.
On November 6, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmdlp.net> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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@statefarmdlp.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <statefarmdlp.net> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmdlp.net> domain name.
3. Respondent registered and used the <statefarmdlp.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, is a nationally recognized automobile
insurance company, and provides financial services such as banking and fund
investments. Complainant began using the
STATE FARM mark in 1930, eventually registering it with the United States
Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No.
1,979,585). Complainant has also
registered its mark with other governmental trademark authorities worldwide.
Respondent, Dallas Purdum,
registered the <statefarmdlp.net>
domain name on June 20, 2008. The
disputed domain name routes Internet users to an unrelated website that belongs
to a domain registration company.
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 multiple registrations with the USPTO and other governmental trademark authorities worldwide are sufficient to establish Complainant’s rights in its STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <statefarmdlp.net> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The disputed domain name incorporates the entire mark. Moreover, the addition of the letters “dlp” to Complainant’s mark does not sufficiently distinguish the disputed domain name from Complainant’s mark. The addition of the generic top-level domain (“gTLD”) “.net” does not negate the confusingly similar aspects of the Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i)
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to the Respondent to prove it has legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“[I]t 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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Due to Respondent’s failure to respond to the Complaint, the Panel will determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). The Panel may accept the allegations and inferences in the Compliant as true unless clearly contradicted. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); 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.”).
The <statefarmdlp.net>
disputed domain name resolves to an unrelated website, which belongs to a
domain registration company. Respondent
is exploiting the national recognition of the Complainant’s STATE FARM mark to redirect
confused Internet users to a domain name registration company. The Panel finds that Respondent has not used
the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also 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).”).
The Panel finds no evidence that Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Dallas Purdum.” Without further evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s commercial
use of the disputed domain name, which is confusingly similar to Complainant’s
mark, evidences bad faith registration and use of the disputed domain name
under Policy ¶ 4(b)(iv). Respondent is likely receiving compensation from
redirecting Internet users to a website that they may assume is endorsed by
Complainant. The Panel finds this use is
an attempt by Respondent to profit from the goodwill Complainant has
established in its mark. See Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976
(Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the misleading
domain name by receiving ‘click-through-fees.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmdlp.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 22, 2008
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