national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Rampe Purda

Claim Number: FA1009001347311

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), represented by Debra J. Monke of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Rampe Purda ("Respondent"), Finland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <discountstatefarm.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2010 in both the English and Finnish languages; the National Arbitration Forum received payment on September 20, 2010.

 

On September 23, 2010, Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <discountstatefarm.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com and that Respondent is the current registrant of the name.  Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 27, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of October 18, 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@discountstatefarm.com.  Also on September 27, 2010, the Finnish language 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 October 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in the English language.

 

RELIEF SOUGHT

Complainant requests that the contested domain name <discountstatefarm.com> be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is an international provider of insurance and financial services. 

 

Complainant owns service mark registrations with the United States Patent and Trademark Office ("USPTO") for its STATE FARM mark (including Reg. No. 1,979,585, issued June 11, 1996). 

 

Respondent registered the <discountstatefarm.com> domain name on June 24, 2010. 

 

Respondent’s domain name is not currently connected to an active website.

 

Respondent has not made demonstrable preparations to use the disputed domain name for a legitimate use. 

 

Respondent’s <discountstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.

 

Respondent is not commonly known by the <discountstatefarm.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. 

 

Respondent does not have any rights or legitimate interests in the disputed domain name <discountstatefarm.com>.

 

Respondent registered and uses the <discountstatefarm.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

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 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 a 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:

 

i.  the domain name registered by Respondent is identical or confusingly similar

    to a trademark or service mark in which Complainant has rights; and

ii. Respondent has no rights to or legitimate interests in respect of the domain  

    name; and

iii. the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in its STATE FARM mark under Policy ¶ 4(a)(i) through its multiple trademark registrations of the mark with the USPTO.  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, a Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).” Complainant need not own a trademark registration in the country of Respondent’s residence in order to establish rights under Policy ¶ 4(a)(i).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient that a complainant have rights in a mark in some jurisdiction).

 

The <discountstatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark because the domain name contains the entire mark, absent the space between the terms of the mark, and merely adds the generic term “discount” and the generic top-level domain (“gTLD”) “.com.”  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:

 

spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.

 

See also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i));  further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights to or legitimate interests in the  <discountstatefarm.com> domain name.  Complainant is required to make out a prima facie case in support of these allegations.  Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:

 

complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.

 

See also 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.”

 

Complainant has produced a prima facie case under this head of the Policy.  Owing to Respondent’s failure to respond to the Complaint filed in these proceedings, we may presume that Respondent does not have any rights to or legitimate interests in the  <discountstatefarm.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond). 

 

Nevertheless, we will review the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by observing that Complainant argues, and Respondent does not deny, that Respondent is not commonly known by the <discountstatefarm.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark.  Moreover, the pertinent WHOIS information identifies the registrant of the <discountstatefarm.com> domain name only as “Rampe Purda”, which does not resemble the contested domain name, and there is no further evidence in the record to suggest that Respondent is commonly known by the disputed domain name.  On this record, we must conclude Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).

 

We also note that Complainant contends, without objection from Respondent, that Respondent has failed to connect the disputed domain name with active content since registering the domain name June 24, 2010.  Such failure to use the domain name actively is evidence that Respondent does not have rights to or legitimate interests in the domain name.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrates that that 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 TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):

 

[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 

 

Therefore, the Panel finds that Respondent’s failure to make an active use of the contested domain name is evidence that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

When conducting a Policy ¶ 4(a)(iii) analysis, we are not limited to the enumerated factors in Policy ¶ 4(b), but may consider the totality of the circumstances. 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.

 

This is particularly so where, as here, Respondent has made no active use of the contested domain name.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):

 

The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.

 

On the record before us, it is uncontested that Respondent has not connected the <discountstatefarm.com> domain name with active content since registering the name on June 24, 2010.  Further, Complainant contends, and Respondent does not deny, that Respondent has not made demonstrable preparations to use the disputed domain name for a legitimate use.  Therefore we conclude that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make an active use of a contested domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <discountstatefarm.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  November 9, 2010

 

 

 

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