State Farm Mutual Automobile Insurance Company v. Brandon Mahlios
Claim Number: FA0907001275991
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
NAMES
The domain name at issue are <statefarmdropsflorida.com>, <statefarmleavesflorida.com>, <statefarmdropsflorida.net>, <statefarmfleessunshinestate.com>, <statefarmdropsflorida.org>, <screwstatefarm.com>, <statefarmflees.com>, <screwstatefarmflorida.com>, <statefarmfleesflorida.com>, <statefarmscrewsflorida.com>, <statefarmscrewssunshinestate.com>, and <statefarmagentssuck.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 28, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmdropsflorida.com>, <statefarmleavesflorida.com>, <statefarmdropsflorida.net>, <statefarmfleessunshinestate.com>, <statefarmdropsflorida.org>, <screwstatefarm.com>, <statefarmflees.com>, <screwstatefarmflorida.com>, <statefarmfleesflorida.com>, <statefarmscrewsflorida.com>, <statefarmscrewssunshinestate.com>, and <statefarmagentssuck.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 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@statefarmdropsflorida.com, postmaster@statefarmleavesflorida.com, postmaster@statefarmdropsflorida.net, postmaster@statefarmfleessunshinestate.com, postmaster@statefarmdropsflorida.org, postmaster@screwstatefarm.com, postmaster@statefarmflees.com, postmaster@screwstatefarmflorida.com, postmaster@statefarmfleesflorida.com, postmaster@statefarmscrewsflorida.com, postmaster@statefarmscrewssunshinestate.com, and postmaster@statefarmagentssuck.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmdropsflorida.com>, <statefarmleavesflorida.com>, <statefarmdropsflorida.net>, <statefarmfleessunshinestate.com>, <statefarmdropsflorida.org>, <screwstatefarm.com>, <statefarmflees.com>, <screwstatefarmflorida.com>, <statefarmfleesflorida.com>, <statefarmscrewsflorida.com>, <statefarmscrewssunshinestate.com>, and <statefarmagentssuck.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmdropsflorida.com>, <statefarmleavesflorida.com>, <statefarmdropsflorida.net>, <statefarmfleessunshinestate.com>, <statefarmdropsflorida.org>, <screwstatefarm.com>, <statefarmflees.com>, <screwstatefarmflorida.com>, <statefarmfleesflorida.com>, <statefarmscrewsflorida.com>, <statefarmscrewssunshinestate.com>, and <statefarmagentssuck.com> domain names.
3. Respondent registered and used the <statefarmdropsflorida.com>, <statefarmleavesflorida.com>, <statefarmdropsflorida.net>, <statefarmfleessunshinestate.com>, <statefarmdropsflorida.org>, <screwstatefarm.com>, <statefarmflees.com>, <screwstatefarmflorida.com>, <statefarmfleesflorida.com>, <statefarmscrewsflorida.com>, <statefarmscrewssunshinestate.com>, and <statefarmagentssuck.com> domain names 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
Respondent registered the <statefarmdropsflorida.com>, <statefarmleavesflorida.com>,
<statefarmdropsflorida.net>, <statefarmfleessunshinestate.com>,
<statefarmdropsflorida.org>, <screwstatefarm.com>,
<statefarmflees.com>, <screwstatefarmflorida.com>,
<statefarmfleesflorida.com>, <statefarmscrewsflorida.com>,
<statefarmscrewssunshinestate.com>, and <statefarmagentssuck.com>
domain names on
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
Complainant argues that
Respondent’s disputed domain names are confusingly similar to Complainant’s
STATE FARM mark pursuant to Policy ¶ 4(a)(i). Each of the disputed domain names contain
Complainant’s STATE FARM mark, add generic terms, and add a generic top-level
domain (“gTLD”). The Panel finds that a
disputed domain name that adds generic terms to a popular and registered mark
creates a confusing similarity between the disputed domain name and the
registered mark. See Arthur Guinness
Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. 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 names 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 disputed domain names, in that the registrant is listed as “Brandon
Mahlios.” Without evidence to the
contrary, the Panel finds that Respondent is not commonly known by the disputed
domain names 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 names
were registered on
On
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The
Panel finds that Respondent’s registration and use of the disputed
domain names to operate a website in direct competition with Complainant constituted
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
Respondent’s use of the confusingly similar disputed domain names 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 insurance services in direct competition with Complainant is further evidence of bad faith registration and use. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain names constituted 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 <statefarmdropsflorida.com>, <statefarmleavesflorida.com>, <statefarmdropsflorida.net>, <statefarmfleessunshinestate.com>, <statefarmdropsflorida.org>, <screwstatefarm.com>, <statefarmflees.com>, <screwstatefarmflorida.com>, <statefarmfleesflorida.com>, <statefarmscrewsflorida.com>, <statefarmscrewssunshinestate.com>, and <statefarmagentssuck.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 11, 2009
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