State Farm Mutual Automobile
Insurance Company v. Mahalo c/o Elliot Cook
Claim Number: FA1004001317317
PARTIES
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 <statefarmanswers.com> and <statefarmquestions.com>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge has no known conflict in serving
as Panelists in this proceeding.
Judge Nelson A. Diaz, Houston Putnam Lowry, Esq. and Debrett G.
Lyons (chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 5, 2010.
On April 5, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <statefarmanswers.com> and <statefarmquestions.com>
domain names are registered with Godaddy.com,
Inc. and that the 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 April 7, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 27,
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@statefarmanswers.com
and postmaster@statefarmquestions.com.
Also on April 7, 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 post and fax, to
all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received on April
26, 2010. Respondent’s Response
was received without the annexes separated from the Response and so the FORUM
deemed the Response deficient according to ICANN Rule 5(a). On April 30, 2010 Complainant made Additional
Submissions which were in conformity with the ICANN Rules. On May 3, 2010 Respondent wrote to the Forum
offering to transfer the disputed domain names to Complainant.
On May 5, 2010, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Judge Nelson A. Diaz, Houston Putnam Lowry, Esq. and
Debrett G. Lyons as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights and
alleges that the disputed domain names are confusingly similar to the trademark.
Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent
registered and is using the disputed domain names in bad faith.
B. Respondent
Respondent broadly denies Complainant’s allegations in a Response which
was adjudged by the Forum not to be in compliance with ICANN Rule
5(a). However for reasons which follow
it is unnecessary for the Panel to decide whether or not to exercise its
discretion to consider the Response.
C. Additional Submissions
Both parties made Additional Submissions. For reasons which follow it is not necessary
to summarize Complainant’s Additional Submissions.
Respondent wrote to the Forum on May 3, 2010 stating: Mahalo wishes to resolve the matter by
transferring statefarmanswers.com & statefarmquestions.com to the
complainant.
FINDINGS
Preliminary
Procedural Issue
A preliminary issue arises as to whether the
Panel should decide this case under the Policy given that Respondent wishes to
resolve the dispute by transferring the disputed domain names to Complainant.
So, for example, in the case of Disney
Enterprises., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005), it was said that
“where Respondent has agreed to comply with Complainant’s request [to transfer
the domain name], the Panel felt it to be expedient
and judicial to forego the traditional UDRP analysis and order the transfer of
the domain names.”
By way of contrast, in the case of State
Farm Mutual Automobile Insurance Co. v. Richard Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007), it was common ground
between the parties that, prior to the filing of the complaint, respondent had
offered to transfer the disputed domain name to complainant and complainant had
accepted that offer. Nonetheless,
complainant had taken a decision to press forward and file the complaint. Respondent in that case then wrote to the
Forum stating in a letter that it “agreed with the complaint and agreed to
release the Domain name.” That post-complaint correspondence was copied to complainant, but
complainant did nothing to indicate whether it wished to abandon the complaint
or not. In those circumstances,
the panel there drew the inference that the complaint was maintained and so
went on to decide the dispute under the terms of the Policy.
This Panel finds that it is the clear
intention of the Respondent that the disputed domain names be immediately
transferred from Respondent to Complainant.
For that reason, it considers that it there is no imperative to apply
the Policy.
DECISION
It is Ordered that the <statefarmanswers.com> and <statefarmquestions.com>
domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons
Judge Nelson A. Diaz
Panelists
Dated: May 12, 2010
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