State
Farm Mutual Automobile Insurance Company v.
Claim Number: FA0906001268999
Complainant is State
Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forrest of State Farm Mutual Automobile Insurance Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmlocation.com>, registered with Planet Online Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 18, 2009; the National Arbitration Forum received a hard copy of the Complaint June 19, 2009.
The National Arbitration Forum attempted to verify that the <statefarmlocation.com> domain name was registered with Planet Online Corp. and that Respondent was the current registrant of that domain name. Planet Online Corp. however, did not respond to multiple contact attempts from the National Arbitration Forum. The National Arbitration Forum then contacted ICANN regarding Planet Online Corp.’s lack of response to the verification request, and notified ICANN that it would be proceeding without verification. The National Arbitration Forum commenced the case July 13, 2009.
On July 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 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@statefarmlocation.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Preliminary Issue:
Other Correspondence Indicating Potential Consent to Transfer
Respondent did not file a formal
Response but sent several e-mails to the National Arbitration Forum in which Respondent
asserted that it is the administrator of the disputed domain name and expressed
a willingness to consent to the transfer of the
disputed domain name. The Panel finds this correspondence to be some evidence that
Respondent consents to transfer the disputed domain name and that Respondent has not otherwise contested the
Complaint. However, Complainant has not implicitly consented in its Complaint
to the transfer of the disputed domain name without a decision on the
merits by the Panel. Further, the “consent-to-transfer” approach has also been
shown to be one way for cybersquatters to avoid adverse findings against them. Graebel Van Lines, Inc. v.
The Panel finds that the transfer of the disputed domain name should be governed by the Policy in a decision on the merits.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <statefarmlocation.com>, is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate interests in the <statefarmlocation.com> domain name.
3. Respondent registered and used the <statefarmlocation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <statefarmlocation.com> domain name October 26, 2008. The disputed domain name does not resolve to an active website; it resolves to a website displaying the message: “Network Error.”
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the STATE FARM mark based on its registration of the mark with the USPTO under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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)).
Respondent’s disputed domain name, <statefarmlocation.com>, incorporates Complainant’s entire mark with the only alterations being the addition of the generic term “location” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that these modifications do not sufficiently distinguish the disputed domain name from Complainant’s STATE FARM mark and that the <statefarmlocation.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also 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).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <statefarmlocation.com> domain name. Pursuant to Policy ¶ 4(c), once a Complainant makes a prima facie case in support of its allegations, Respondent must show that it does have such rights or interests in the domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Due to Respondent’s failure to respond to the Complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent’s <statefarmlocation.com> domain name does not resolve to an active website. The only content displayed on the website is the message: “Network Error.” Complainant alleges that Respondent’s failure to make demonstrable preparations to use the disputed domain name in connection with an active website supports findings that Respondent lacks rights and legitimate interests in the <statefarmlocation.com> domain name. The Panel agrees; Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant asserts further that Respondent is not affiliated with or sponsored by Complainant. Moreover, Complainant notes that it has never granted permission to or otherwise authorized Respondent to use the STATE FARM mark in any way. Finally, the WHOIS information identifies the registrant as “Nimba Mountain Media c/o Administrator.” Without any further information in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
When assessing bad faith registration and use, the Panel is permitted to consider the totality of the circumstances under an ICANN Policy ¶ 4(a)(iii) analysis and is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original).
To show bad faith registration and use under ICANN Policy ¶ 4(a)(iii), Complainant is not required to show that a Respondent has put the disputed domain name to any use. In fact, failure to make an active use of the disputed domain name, standing alone, supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel finds that Respondent’s failure to actively use or demonstrate preparations to use the disputed domain name is indicative of bad faith registration and use of the <statefarmlocation.com> domain name pursuant to Policy ¶ 4(a)(iii). See 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); see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN 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 <statefarmlocation.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 20, 2009.
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