State Farm Mutual Automobile Insurance Company v. Property by Location, llc c/o Jonathan Hooks
Claim Number: FA0909001282843
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 names at issue are <mylocalstatefarmagent.com> and <mylocalstatefarm.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.
Honorable Paul A. Dorf (Ret.), as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mylocalstatefarmagent.com> and <mylocalstatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <mylocalstatefarmagent.com> and <mylocalstatefarm.com> domain names.
3. Respondent registered and used the <mylocalstatefarmagent.com> and <mylocalstatefarm.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, has been doing business under the STATE
FARM mark since 1930. Complainant holds
a registration of the STATE FARM mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued
Respondent, Property by
Location, llc c/o Jonathan Hooks, registered the <mylocalstatefarmagent.com>
and <mylocalstatefarm.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.
The Panel finds that Complainant has established rights in
the STATE FARM mark pursuant to Policy ¶ 4(a)(i) via
its registration of the mark with the USPTO (Reg. No. 1,979,585 issued
The <mylocalstatefarmagent.com>
domain name consists of (1) the generic words “my local,” (2)
Complainant’s STATE FARM mark with the space omitted, (3) the generic word
“agent,” which is commonly used for one who sells insurance, and (4) the
generic top-level domain (“gTLD”) “.com.”
The <mylocalstatefarm.com> domain
name consists of all of the above except for the generic word “agent.” The Panel finds that the addition
of the words “my local” do not distinguish Respondents domain names from
Complainant’s mark. See AOL LLC v. iTech Ent, LLC, FA 726227
(Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii)
is on Complainant to prove that Respondent does not have any rights or
legitimate interests in the <mylocalstatefarmagent.com>
and <mylocalstatefarm.com>
domain names. Once
Complainant has made a prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests pursuant Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent is using the disputed domain names, which are
confusingly similar to Complainant’s STATE FARM mark, to advertise third-party
websites that directly compete with Complainant’s business. The Panel finds that this is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Complainant contends that it has not granted Respondent any
license of other permission to use its STATE FARM mark. Further, Complainant argues that the WHOIS
information associated with the disputed domain names identifies Respondent as
“Property by Location, llc c/o Jonathan
Hooks.” The is no evidence in the record
to indicate that Respondent is commonly known by either of the disputed domain
names. The Panel finds that Respondent
has not established that it is commonly known by either of the disputed domain
names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <mylocalstatefarmagent.com>
and <mylocalstatefarm.com>
domain names, registered on
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain names are confusingly similar to Complainant’s STATE
FARM mark, Internet users accessing
Respondent’s disputed domain names may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s use of the <mylocalstatefarmagent.com>
and <mylocalstatefarm.com>
domain names constitute bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum
The Panel finds that 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 <mylocalstatefarmagent.com> and <mylocalstatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 13, 2009
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