State Farm Mutual Automobile Insurance Company v. Sirous Jafari
Claim Number: FA0907001274188
Complainant is State Farm 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 <statefarmneighbors.com>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2009.
On July 17, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmneighbors.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 July 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 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@statefarmneighbors.com by e-mail.
On August 17, 2009, the Forum received an email from Respondent stating that he was willing to transfer the domain name to State Farm for a reasonable price. The Panel, in its discretion, declines to consider this untimely Response. Furthermore, the Response is not responsive to the allegations of the Complaint.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <statefarmneighbors.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmneighbors.com> domain name.
3. Respondent registered and used the <statefarmneighbors.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and the financial services industries under the STATE FARM mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585). Complainant began using the STATE FARM mark in 1930 and uses the mark in print, on television, and on the Internet to advertise its services.
Respondent registered the <statefarmneighbors.com> domain name on April 3, 2009. Respondent’s disputed domain name redirects Internet users to Respondent’s commercial website offering financial services in direct competition with Complainant.
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.
Complainant obtained a trademark registration for the STATE
FARM mark with the USPTO on June 11, 1996 (Reg. No. 1,979,585). 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
Complainant argues that Respondent’s <statefarmneighbors.com> domain name is confusingly
similar to Complainant’s STATE FARM mark.
Respondent’s disputed domain name contains Complainant’s mark in its
entirety, adds the generic term “neighbors,” and adds the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the addition of the generic term “neighbor” fails to create a
distinguishing characteristic within the disputed domain name. See Warner Bros. Entm’t Inc. v. Rana, FA 304696
(Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark); see also
Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding
that the respondent’s domain names were confusingly similar to Complainant’s
GOOGLE mark where the respondent merely added common terms such as “buy” or
“gear” to the end). In addition, the
Panel finds that the addition of a gTLD is irrelevant in distinguishing a
disputed domain from a registered mark. See Jerry
Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <statefarmneighbors.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Respondent’s WHOIS registration is evidence that Respondent
is not commonly known by the <statefarmneighbors.com>
domain name, in that the registrant is listed as “Sirous Jafari.” Without evidence to the contrary, the Panel
finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See 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); see also
Respondent’s disputed domain name
was registered on April 3, 2009 and resolves to Respondent’s commercial website
offering financial services in direct competition with Complainant. The Panel finds that Respondent’s use of the
disputed domain name is neither a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to
market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <statefarmneighbors.com> domain name to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of the confusingly similar <statefarmneighbors.com> domain name in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s STATE FARM mark and in order to offer financial services in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
The Panel finds that ¶ 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 <statefarmneighbors.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 21, 2009
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