State Farm Mutual Automobile Insurance Company v. PerformanceWraps.com c/o Kelly Siedling
Claim Number: FA0905001264741
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 <statefarmwraps.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 27, 2009.
On May 26, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmwraps.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").
On May 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 16, 2009 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@statefarmwraps.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2009, 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 <statefarmwraps.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmwraps.com> domain name.
3. Respondent registered and used the <statefarmwraps.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is the owner of the STATE FARM mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,979,585 issued June 11, 1996). Complainant uses the STATE FARM mark in connection with its insurance and financial services.
Respondent registered the <statefarmwraps.com> domain name on February 3, 2009. The disputed domain name resolves to Respondent’s commercial website at the <performancewraps.com> domain name. Respondent is in the business of supplying consumers with customized car wraps for advertising purposes.
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 concludes that Complainant has established its rights in the STATE FARM mark based on its registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that Respondent’s <statefarmwraps.com> domain name is confusingly similar to its STATE FARM mark. The disputed domain name incorporates Complainant’s STATE FARM mark in its entirety with the addition of the generic term “wraps” and the generic top-level domain “.com.” The Panel finds that the addition of the generic term “wraps” does not negate the confusing similarity between Complainant’s STATE FARM mark and Respondent’s <statefarmwraps.com> domain name. Additionally, the Panel finds that the generic top-level domain “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel finds that Respondent’s <statefarmwraps.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
For the purposes of a Policy ¶ 4(a)(ii) analysis,
corresponding to the factors listed in Policy ¶ 4(c), Complainant must first
make a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name
and the Panel finds that Complainant has done so in these proceedings. Once Complainant satisfies this burden,
Respondent then has the burden to show that it has relevant rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c). In the present proceedings, Respondent has
failed to respond to Complainant’s allegations.
The Panel may infer from this failure that Respondent lacks any rights
or legitimate interests in Respondent’s <statefarmwraps.com>
domain name. 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 Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). The Panel now chooses to
review the record to determine whether Respondent has any rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
The <statefarmwraps.com> domain name resolves to Respondent’s commercial website offering its car wraps for sale. The Panel presumes that Respondent is profiting from such use. The Panel finds that Respondent’s use of Complainant’s STATE FARM mark in the disputed domain name, attempting to divert Internet users seeking Complainant to Respondent’s commercial website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The WHOIS information lists the registrant as
“PerformanceWraps.com c/o Kelly Siedling.”
While the WHOIS information may indicate a possible correlation between
Respondent and the disputed domain name, there is no evidence in the record to
corroborate this fact. Respondent failed
to counter Complainant’s allegations with any evidence to show that it is
commonly known by the disputed domain name under Policy ¶ 4(c)(i). See
Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb.
Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its
name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond
to the Complaint, there has not been any affirmative evidence provided to the
Panel showing that Respondent was commonly known by the disputed domain name
prior to its registration of the domain name.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. SRW
Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though
Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part
of which constitutes the disputed domain name, there is no evidence before the
Panel that Respondent was actually commonly known by that name.”). Thus, the Panel
concludes that Respondent is not commonly known by the <statefarmwraps.com>
domain name under Policy ¶ 4(c)(ii).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is intentionally attempting to attract Internet
users, for financial gain, to its domain name by creating a likelihood of
confusion with Complainant and its STATE FARM mark. The Panel finds that Respondent’s
appropriation of Complainant’s mark for commercial profit constitutes bad faith
registration and use under Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with the complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmwraps.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 30, 2009
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