State Farm Mutual Automobile Insurance Company v. Strategic Financial Group, Inc. c/o Ivan Soto
Claim Number: FA1009001347371
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 Strategic Financial Group, Inc. c/o Ivan Soto ("Respondent"), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmhilliard.com> and <statefarmhilliardohio.com>, registered with 1&1 Internet AG.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 21, 2010, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@statefarmhilliard.com and postmaster@statefarmhilliardohio.com. Also on September 24, 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 October 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names.
3. Respondent registered and used the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, owns the exclusive rights to the STATE FARM mark and uses it in connection with its insurance and financial services business. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its STATE FARM mark (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent, Strategic Financial Group, Inc. c/o Ivan Soto, registered the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names on July 24, 2010. The disputed domain names both resolve to inactive websites.
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.
Complainant contends it has established rights in the STATE FARM mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds the Complainant has established rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i) through its registrations with the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Complainant contends Respondent’s <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names are confusingly similar to Complainant’s STATE FARM mark. Both of the disputed domain names contain Complainant’s entire STATE FARM mark, subtract the space between the two words, and add the generic top-level domain (“gTLD”) “.com.” Additionally, both domain names add a generic term, “hilliard,” to Complainant’s mark. One of the domain names adds the geographic term, “ohio.” Previous panels have found that the removal of a space from a complainant’s mark and the addition of a gTLD do not distinguish a disputed domain name from a famous mark because spaces are not reproducible in a domain name, and a gTLD is essential to the nature of a web address. Earlier panels have also asserted that the addition of generic or geographic terms to a complainant’s mark, render the disputed domain name confusingly similar. 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 [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Therefore, the Panel concludes that Respondent’s <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names are confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names. Previous panels have founds that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant has made a prima facie case. Due to Respondent’s failure to respond, the Panel may infer that Respondent does not have rights or legitimate interests in either of the <statefarmhilliard.com> or <statefarmhilliardohio.com> domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use the STATE FARM mark. The WHOIS information identifies the domain name registrant as “Strategic Financial Group, Inc. c/o Ivan Soto.” There is no other evidence set forth in the record to show that Respondent is commonly known by the <statefarmhilliard.com> or <statefarmhilliardohio.com> domain names. The Panel finds such is an indication that Respondent has not established any rights or legitimate interests in the disputed domain names pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent fails to make an active use of the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names. The Panel finds that this inactive use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 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).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
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.”).
Respondent fails to make an active use of the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names. The disputed domain names both resolve to websites that read: “Error 403 – Forbidden You tried to access a document for which you don't have privileges.” The Panel finds Respondent’s failure to make an active use of the confusingly similar disputed domain names is evidence that Respondent’s registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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); see also 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).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmhilliard.com> and <statefarmhilliardohio.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 3, 2010
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