State Farm Mutual Automobile Insurance Company v. Yodle c/o Domain Administrator
Claim Number: FA1004001317331
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 <statefarminsuranceny.com>, registered with Enom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2010.
On April 5, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarminsuranceny.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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 firstname.lastname@example.org. Also on April 6, 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 and determined to be complete on April 20, 2010.
On April 23, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant State Farm Mutual Automobile Insurance Company contends that:
1. The domain name <statefarminsuranceny.com> which is registered in the name of Respondent is identical or confusingly similar to Complainant’s registered trademarks for STATE FARM INSURANCE, registered in the United States of America, Canada and Mexico in which Complainant has rights.
2. Respondent does not have any rights or legitimate interests in the <statefarminsuranceny.com > domain name.
3. Respondent registered and is using the domain name <statefarminsuranceny.com> in bad faith.
4. The domain name should be transferred from Respondent to Complainant.
Respondent Yodle c/o Domain Administrator contends that:
1. Its failure to respond to Complainant’s prior requests that Respondent transfer the domain name <statefarminsuranceny.com> to Complainant was inadvertent.
2. Respondent had no bad faith intent in connection with the registration or use of the domain name in dispute.
3. Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, transfer the domain name registration to Complainant.
4. This is not an admission to the three elements of the Policy, but rather an offer of unilateral consent to transfer. Since Respondent consents to the transfer of the domain name <statefarminsuranceny.com> to Complainant, the panel need not reach a determination on the merits of the Complaint.
is the registered proprietor of the trademark STATE FARM INSURANCE, registered
2. Respondent registered the domain name <statefarminsuranceny.com> on January 26, 2010.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
However, it is clear from a reading of the Complaint and Response that this matter is now a request for a consent order. That is so because, first, Complainant asks for an order that the domain name be transferred to it for the reasons set out above. Respondent says that it is only inadvertence that has led to its failure to respond to Complainant’s requests to transfer the domain name and that it had no bad faith intent in connection with the registration or use of the domain name. It therefore also asks for an order that the domain name be transferred to Complainant. Both parties are therefore asking for the same order.
It is open to the Panel when faced with a request for a consent order of this nature to forgo the usual UDRP analysis of the three elements set out above and to make an order for the transfer of the domain name to Complainant. That was the course that was followed in Boehringer Ingelheim Int’l GmbH v. modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003), PSC Management Limited Partnership v. PSC Management Limited Partnership (Nat. Arb. Forum June 6, 2005) and Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) where it was said:
“In this case, the parties have both asked for the domain name to be transferred to the Complainant…Since the requests of the parties in this case are identical, the panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”.
The same course was followed by the panel as presently constituted in Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, FA 670051 (Nat. Arb. Forum May 23, 2006), Diners Club International Ltd. v. Nokta Internet Technologies FA 720824 (Nat. Arb.Forum July 24, 2006) and Digg Inc. v. Damien Overeem, FA 611000 (Nat. Arb. Forum Dec 20, 2006) and also by the panel in The Body Shop International plc v. Agri, Lacus, and Caelum LLC, FA 679564 (Nat. Arb. Forum May 25, 2006). The Panel respectfully adopts the position as expressed in The Body Shop International plc v. Agri, Lacus, and Caelum LLC, supra:
“Consistent with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Because both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties.”
Indeed, as has often been said, it would be unwise to make any other findings in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any findings of fact or compliance or otherwise with respect to the detailed provisions of the Policy, but will make the only order that is appropriate in the circumstances, which is an order for the transfer of the domain name to Complainant.
Accordingly, it is Ordered that the <statefarminsuranceny.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Dated: April 30, 2010
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