State Farm Mutual Automobile Insurance Company v. Richard Dimartino
Claim Number: FA1006001332422
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 <statefarmnjagents.com>, registered with TLDS, LLC d/b/a SRSPLUS.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 29, 2010.
On June 30, 2010, TLDS, LLC DBA SRSPLUS confirmed by e-mail to the National Arbitration Forum that the <statefarmnjagents.com> domain name is registered with TLDS, LLC d/b/a SRSPLUS and that Respondent is the current registrant of the name. TLDS, LLC d/b/a SRSPLUS verified that Respondent is bound by the TLDS, LLC DBA SRSPLUS registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@statefarmnjagents.com. Also on July 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <statefarmnjagents.com>, is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate interests in the <statefarmnjagents.com> domain name.
3. Respondent registered and used the <statefarmnjagents.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 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) in connection with underwriting and servicing automobile, homeowners, life, and fire insurance.
Respondent, Richard Dimartino, registered the disputed domain name March 3, 2008. The disputed domain name fails to resolve to an active 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 based on
its holding of multiple trademark registrations for the mark with the USPTO (e.g., Reg. No. 1,979,585 issued June 11,
1996). The Panel finds that registration
of its STATE FARM mark with the USPTO is evidence of Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing
Complainant asserts that Respondent’s <statefarmnjagents.com>
domain name is confusingly similar to Complainant’s STATE FARM mark. Respondent’s disputed domain name removes the
space between the terms in Complainant’s mark, adds the geographical
abbreviation “NJ” (for New Jersey), adds the descriptive term “agents,” and adds
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that these alterations and additions do not sufficiently
distinguish the disputed domain name from Complainant’s mark. See
Bond & Co. Jewelers, Inc. v.
Therefore, the Panel finds that pursuant to Policy ¶
4(a)(i), Respondent’s <statefarmnjagents.com> domain name is confusingly similar to
Complainant’s STATE FARM mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant must first make a prima facie case to support its
allegations, then the burden shifts to Respondent to prove it has such rights
or legitimate interests in the disputed domain name under Policy ¶
4(a)(ii). The Panel finds that based on
the arguments in the Complaint, Complainant made a prima facie case to support its contentions and that Respondent
failed to submit a Response or any proof in this proceeding. See
Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007)
(“Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii), and then the burden shifts to Respondent to show it does have rights
or legitimate interests.”); see also F.
Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
Nevertheless, this Panel still
examines the submission to determine whether the record suggests that
Respondent has any rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c).
The WHOIS information for the disputed domain name lists the registrant as “Richard Dimartino.” Complainant asserts that Respondent has never been known by or performed business under the disputed domain name. Complainant further asserts that Complainant does not have a contractual arrangement with Respondent that would allow it to offer services under Complainant’s STATE FARM mark. Based on Complainant’s allegations and the lack of evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to a Policy ¶ 4(c)(ii) analysis. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent’s disputed domain name resolves to an inactive website that displays on the website the message: “The page cannot be displayed.” The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence that Respondent is not using the disputed domain name in connection with either 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 Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); 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 the Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also urges that Respondent registered and held
the disputed domain name in bad faith. The
Panel finds that it may consider the totality of the circumstances when
conducting a Policy ¶ 4(a)(iii) analysis for bad faith, and that the Panel 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 contends
that Respondent’s <statefarmnjagents.com> domain name fails to resolve to an active
website. The Panel finds that
Respondent’s failure to make an active use of the disputed domain name since
its registration on March 3, 2008, is evidence to support findings that Respondent
registered and held the disputed domain name in bad faith pursuant to a Policy
¶ 4(a)(iii) analysis. See Pirelli & C. S.p.A. v.
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmnjagents.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 10, 2010.
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