State Farm Mutual Automobile Insurance Company v. richard contact
Claim Number: FA1005001326341
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 <statefarmsinfo.net>, registered with Moniker Online Services, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 25, 2010.
On May 26, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmsinfo.net> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 May 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@statefarmsinfo.net. Also on May 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "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 <statefarmsinfo.net> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmsinfo.net> domain name.
3. Respondent registered and used the <statefarmsinfo.net> domain name 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 name
“State Farm” since 1930 and engages in business both in the insurance and
financial services industry. Complainant
holds mulitple trademark registrations for its STATE FARM mark with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent, richard contact,
registered the disputed domain name on March 31, 2010. 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.
Previous panels have held that a complainant’s registration
of a mark with the USPTO is sufficient evidence of a complainant’s rights in a
mark to satisfy Policy ¶ 4(a)(i). Therefore, based on Complainant’s
registration of its STATE FARM mark with the USPTO (e.g., Reg. No. 1,979,585 issued
June 11, 1996), the Panel finds that Complainant has established its rights in
the STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb.
Forum Apr. 26, 2006) (finding that the complainant had established rights in
the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the
USPTO); see also Miller Brewing
Complainant alleges that Respondent’s <statefarmsinfo.net> is confusingly similar to
Complainant’s STATE FARM mark.
Respondent’s disputed domain name incorporates Complainant’s STATE FARM
mark in its entirety and adds the letter “s,” the generic term “info,” and the
generic top-level domain (“gTLD”) “.net.”
The Panel finds that the addition of the letter “s” and the generic term
“info” do not sufficiently distinguish the disputed domain name and
Complainant’s mark. See Am.Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding that the respondent’s domain name, <americanonline.com>, is
confusingly similar to the complainant’s famous
The
Panel finds that Complainant has satisified Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden shifts to Respondent to prove it does have rights or legitimate interests. The Panel finds that based on the allegations contained in the Complaint, Complainant has successfully established a prima facie case. Additionally, Respondent has failed to meet its burden which is evidenced by Respondent’s failure to respond to these proceedings. The Panel finds that based on Respondent’s failure to respond, the Panel can infer that Complainant’s allegations are true and correct. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Nevertheless, the Panel will examine the record according to the factors outlined in Policy ¶ 4(c) to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant alleges that it did not authorize Respondent to register the disputed domain name or to use its STATE FARM mark for any purpose. Complainant asserts that Respondent is not commonly known by the disputed domain name and has never been known by or performed business under the disputed domain name. The WHOIS information indicates the registrant of the disputed domain name is “richard contact” which the Panel finds is not sufficiently related to the disputed domain and thus the Panel finds that Respondent is not commonly known by the disputed domain name under 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).
Complainant asserts that Respondent’s disputed domain name resolves
to an inactive website. The Panel finds
that Respondent’s failure to make an active use of the <statefarmsinfo.net> domain name is neither a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) nor 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 George Weston
Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (finding that the respondent had no rights or legitimate interests in a
domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed
to make any active use of the domain name).
The Panel finds that Complainant has satisified Policy ¶ 4(a)(ii).
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.”).
Complainant states that Respondent’s disputed domain name fails to resolve to an active website. The Panel finds that Respondent’s failure to make an active use of the <statefarmsinfo.net> domain name is evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); 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 also finds that given the widespread use of Complainant’s STATE FARM mark and its connection with well-known insurance and financial services products, the confusingly similar nature of Respondent’s disputed domain name allows the Panel to find evidence of opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmsinfo.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 7, 2010
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