State Farm Mutual Automobile Insurance Company v. Consulting c/o David Slone
Claim Number: FA0904001257979
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brstatefarm.com>, registered with Godaddy.com, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2009.
On April 16, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <brstatefarm.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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").
20, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of May
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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <brstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <brstatefarm.com> domain name.
3. Respondent registered and used the <brstatefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a company that has done business continuously under the STATE FARM mark since 1930, in both the insurance and financial services industries. 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 <brstatefarm.com> domain name on December 8, 2008. The disputed domain name resolves to a website that simply states “Welcome to brstatefarm.com.”
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 has established rights in
the STATE FARM mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under
Complainant contends that
domain name is confusingly similar to its STATE FARM mark. The <brstatefarm.com> domain name differs from Complainant’s mark in three ways:
(1) the letters “br” have been added to the beginning of the mark; (2) the
space has been removed from the mark; and (3) the generic top-level domain
(“gTLD”) “.com” has been added to the mark.
The Panel finds that adding two indiscriminate letters to the beginning
of a mark does not sufficiently distinguish a domain name from a mark that it
incorporates, nor does the removal of a space from between the terms of a mark. The Panel also finds that despite the
addition of a gTLD, a disputed domain name may still be confusingly similar to
a mark, because every domain name must contain a top-level domain. Therefore, the Panel finds that Respondent’s
disputed domain name is not sufficiently distinguished from, and is therefore
confusingly similar to, Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <brstatefarm.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known by the <brstatefarm.com> domain name nor has it ever been the owner or licensee of the STATE FARM mark. The WHOIS record for the disputed domain name lists Respondent as “Consulting c/o David Slone.” Because of the lack of similarity between Respondent’s listed business name and the disputed domain name, along with the fact that Respondent has failed to show any evidence contrary to Complainant’s contentions, the Panel finds that Respondent is not commonly known as <brstatefarm.com> pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent maintains a website at the <brstatefarm.com> domain name that simply states “Welcome to brstatefarm.com.” Complainant contends that Respondent has made no demonstrable preparations to use the disputed domain name. The Panel finds that because of Respondent’s failure to use the <brstatefarm.com> domain name in connection with an active website, Respondent has made 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has failed to actively use the disputed domain name, and that therefore, Respondent has registered and used the disputed domain name in bad faith. The Panel agrees and finds that Respondent’s failure to make active use of the <brstatefarm.com> domain name is evidence of registration and use in 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 [failure to make an active 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 [failure to make an active 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 <brstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 2, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum