State Farm Mutual Automobile Insurance Company v. Centric CRM, Inc. c/o Thomas Manos
Claim Number: FA1002001307045
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 <statefarmnation.com>, registered with Tucows 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 February 8, 2010. With its
Complaint, Complainant also chose to proceed entirely electronically under the
new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the
new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the
Forum’s website.
On Feb 08, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmnation.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name(s). Tucows Inc. has verified that Respondent is bound by the Tucows 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 February
11, 2010, the Forum served the Complaint and all Annexes, including a Written
Notice of the Complaint, setting a deadline of March 3, 2010 by which
Respondent could file a Response to the Complaint, via e-mail to all entities
and persons listed on Respondent’s registration as technical, administrative,
and billing contacts, and to postmaster@statefarmnation.com. Also on February 11, 2010, the Written Notice
of the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, , 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@statefarmnation.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2010, 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") (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <statefarmnation.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmnation.com> domain name.
3. Respondent registered and used the <statefarmnation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, holds multiple trademark registrations
with the United States Patent and Trademark Office (“USPTO”) for its STATE FARM
mark (e.g., Reg. No. 1,979,585 issued
June 11, 1996) in connection with underwriting and servicing insurance.
Respondent, Centric CRM, Inc.
c/o Thomas Manos, registered the <statefarmnation.com> domain name on October 5, 2009. The disputed domain name resolves to an
inactive website.
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 asserts rights in its STATE FARM mark through
its holding of a trademark registration with the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996). The Panel finds that Complainant has
established rights in the STATE FARM mark under Policy ¶ 4(a)(i) through its
registration with the USPTO. 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 Miller Brewing
Complainant argues that Respondent’s <statefarmnation.com> domain name is confusingly
similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s mark as it incorporates the entirety of
Complainant’s mark and adds the generic term “nation” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the addition of the generic term “nation” creates a confusing similarity
between the disputed domain name and Complainant’s mark. 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 Experian Info. Solutions, Inc.
v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that
several domain names incorporating the complainant’s entire EXPERIAN mark and
merely adding the term “credit” were confusingly similar to the complainant’s
mark). The Panel also finds that the
addition of a gTLD to a mark is irrelevant in distinguishing a disputed domain
name from a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also 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 disputed 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 and Respondent has failed to submit a Response to these proceedings. 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant alleges that Respondent is not associated with, affiliated with or sponsored by Complainant. Complainant did not authorize the Respondent to register the domain name or to use Complainant’s mark for Respondent’s business purposes. The WHOIS information lists the registrant as “Centric CRM, Inc. c/o Thomas Manos.” 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent, Centric CRM, Inc. c/o Thomas Manos, registered the <statefarmnation.com> domain name on October 5, 2009. The disputed domain name resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is neither 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). See 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)); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it 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.”).
The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 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 <statefarmnation.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 24, 2010
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