State Farm Mutual Automobile Insurance Company v. Rampe PurdaClaim Number: FA1010001350993
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Smith, 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 <statefarmwhyagent.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2010. The Complaint was submitted in both Finnish and English languages.
On October 8, 2010, Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <statefarmwhyagent.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 12, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of September 21, 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@statefarmwhyagent.com by e-mail. Also on October 12, 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 November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 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.
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 English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmwhyagent.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmwhyagent.com> domain name.
3. Respondent registered and used the <statefarmwhyagent.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, engages in business in both the insurance and the financial services industry. Complainant holds multiple trademark registrations for its STATE FARM mark, and variations thereof, with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585 issued June 11, 1996).
Respondent, Rampe Purda, registered the disputed domain name on August 10, 2010. The disputed domain name resolves to an inactive website that states “Domain statefarmwhyagent.com no longer valid.”
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 claims rights in its STATE FARM mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,979,585 issued June 11, 1996). The Panel finds that Complainant’s registration of its STATE FARM mark with a trademark authority is conclusive evidence of Complainant’s rights in the mark, regardless of whether Complainant registered the mark in the country where Respondent resides. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel concludes that Complainant has demonstrated rights in its STATE FARM mark pursuant to the requirements of Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <statefarmwhyagent.com> domain name is confusingly similar to Complainant’s STATE FARM mark. Respondent’s disputed domain name incorporates the entirety of Complainant’s mark, absent the space between the terms. Respondent’s disputed domain name also adds the generic term “why” and the descriptive term “agent,” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a space between terms in Complainant’s mark does not render the disputed domain name distinct from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that neither the addition of a generic nor a descriptive term effectively distinguishes Respondent’s disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to 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)); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Additionally, the Panel finds that a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar to Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <statefarmwhyagent.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the <statefarmwhyagent.com> domain name. Upon the establishment of a prima facie case, the burden then shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. 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.”) The Panel finds that, based on the arguments contained in the Complaint, Complainant has established the necessary prima facie case, effectively shifting the burden to Respondent. Respondent has failed to respond to these proceedings, from which the Panel can infer that Respondent does in fact lack rights and legitimate interests in the disputed 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.”). However, the Panel elects to consider the evidence on record, in light of the factors contained in Policy ¶ 4(c), to determine whether Respondent has rights or legitimate interests in the <statefarmwhyagent.com> domain name.
Complainant argues that Respondent is not associated with, affiliated with, or sponsored by Complainant. Additionally, Complainant avers that it did not authorize Respondent to register the disputed domain name or to use the STATE FARM mark for Respondent’s business purposes. Complainant asserts that Respondent has never been known by or performed business under the <statefarmwhyagent.com> domain name. Indeed, the WHOIS information indicates that the registrant of the disputed domain name is, “Rampe Purda.” The Panel finds that Complainant’s lack of authorization of, and affiliation with, Respondent, as well as the WHOIS information, point to the fact that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant alleges that Respondent’s <statefarmwhyagent.com> domain name resolves to an inactive website. Complainant indicates that the only content appearing on the resolving website is the following statement: “Domain statefarmwhyagent.com no longer valid.” The Panel finds that Respondent’s failure to make an active use of the disputed domain name indicates that Respondent is not using the disputed domain name in connection with 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 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 Policy ¶ 4(a)(ii) is 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.”).
As established previously, 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 disputed domain name is sufficient evidence of Respondent’s bad faith registration and use of the <statefarmwhyagent.com> domain name under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <statefarmwhyagent.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 26, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum