State Farm Mutual Automobile
Insurance Company v. dude fug
Claim Number: FA1003001311737
PARTIES
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <state-farm-insurance.us>, registered
with Enom,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On
On March 10, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 30, 2010 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <state-farm-insurance.us> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2.
Respondent does not have any rights or
legitimate interests in the <state-farm-insurance.us>
domain name.
3.
Respondent registered and used the <state-farm-insurance.us> domain name
in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, State
Farm Mutual Automobile Insurance Company, holds a trademark registration for
its STATE FARM INSURANCE mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,125,010 issued September 11, 1979) in connection
with underwriting life, casualty and fire insurance.
Respondent, dude fug, registered the <state-farm-insurance.us> domain name on
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Respondent, dude fug, registered the <state-farm-insurance.us> domain name on
Complainant
contends Respondent’s <state-farm-insurance.us> domain name is confusingly similar to Complainant’s
STATE FARM INSURANCE mark. The disputed
domain name contains the entirety of Complainant’s mark, adds hyphens between
the words in Complainant’s mark and adds the country code top-level domain
(“ccTLD”) “.us.” The Panel finds that
the addition of hyphens to Complainant’s mark creates a confusing similarity
between the disputed domain name and Complainant’s mark. See
CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between
words of the complainant’s mark is identical to and confusingly similar to the
complainant’s mark); see also Columbia Sportswear Co. v. Keeler, D2000-0206
(WIPO May 16, 2000) (finding “[t]he use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue
is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR
COMPANY”). The Panel also finds that the
addition of a ccTLD is irrelevant in distinguishing between a disputed domain
name and a mark. See Lifetouch,
Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent does
not have any rights or legitimate interests in the <state-farm-insurance.us> domain name.
The burden shifts to Respondent to prove that it does have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a
prima facie case in support of its
allegations. The Panel finds Complainant
has made a sufficient prima facie
case. Due to Respondent’s failure to
respond to the Complaint, the Panel may assume Respondent does not have rights
or legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
There is no
evidence in the record to conclude that Respondent owns any service marks or
trademarks that reflect the <state-farm-insurance.us> domain name. Therefore, the Panel finds that Respondent
does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow
Media Inc. v. Basil, FA 113280 (Nat. Arb.
Forum
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the <state-farm-insurance.us> domain
name. The WHOIS information
identifies Respondent as “dude fug.” Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the <state-farm-insurance.us>
domain name pursuant to Policy ¶
4(c)(iii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum
Respondent uses the <state-farm-insurance.us>
domain name to resolve to a website
that features information on
Complainant’s products and services. The
Panel finds that Respondent’s use of the confusingly similar disputed domain
name to attempt to pass itself off as Complainant is not a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or
legitimate noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the respondent attempts to pass itself off as
the complainant online, which is blatant unauthorized use of the complainant’s
mark and is evidence that the respondent has no rights or legitimate interests
in the disputed domain name); see also
Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use
of the disputed domain name to pass itself off as the complainant in order to
advertise and sell unauthorized products of the complainant was not a bona
fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
disputed domain name pursuant to [UDRP] ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent’s <state-farm-insurance.us> domain name resolves to a website featuring information on Complainant’s products and services. The Panel finds Respondent’s use of the disputed domain name is an attempt by Respondent to pass itself off as Complainant and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <state-farm-insurance.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 16, 2010
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page
NATIONAL ARBITRATION FORUM