national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Koval Ivan

Claim Number: FA1104001381654

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Koval Ivan (“Respondent”), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarminsurancejobs.org>, registered with GoDaddy.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests 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 April 4, 2011; the National Arbitration Forum received payment on April 4, 2011.

 

On April 4, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancejobs.org> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the names.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 April 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2011 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@statefarminsurancejobs.org.  Also on April 5, 2011, 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 April 29, 2011, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant makes the following assertions:

 

Complainant is a large provider of financial and insurance products and services. 

 

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

 

Complainant uses the STATE FARM mark to support and promote its finance and insurance businesses.

 

Respondent registered the disputed domain name on February 16, 2011. 

 

The disputed domain name resolves to a site offering recruitment services for employment opportunities purported to be with Complainant, as well as links to other third party sites unrelated to Complainant. 

 

Respondent presumably receives revenue from the operation of the resolving website.

 

Respondent’s <statefarminsurancejobs.org> domain name is confusingly similar to Complainant’s STATE FARM service mark.

 

Respondent is not commonly known by the <statefarminsurancejobs.org> domain name. 

 

Complainant has not authorized Respondent to register the disputed domain name or to use the State Farm service mark for Respondent’s business purposes.

 

Respondent does not have any rights to or legitimate interests in the domain name <statefarminsurancejobs.org>.

 

Respondent registered and uses the <statefarminsurancejobs.org> 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 a 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 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 its rights in the STATE FARM service mark under Policy ¶ 4(a)(i) by registering the mark with a national trademark authority, the USPTO.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registration); see also 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).

 

It is unnecessary for Complainant to register its mark in Respondent’s country of residence for its rights in the mark to attach for purposes of the Policy.  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction). 

 

Respondent’s domain name is confusingly similar to Complainant’s STATE FARM service mark.  The disputed domain name includes the entirety of the mark while adding the generic terms “insurance” and “jobs,” both of which are descriptive of Complainant’s business, plus the generic top-level domain (“gTLD”) “.org.”  The disputed domain name also removes the space from the mark.  These alterations made to the mark in forming the contested domain name fail to differentiate it from the STATE FARM mark under Policy ¶ 4(a)(i), thereby rendering the domain name confusingly similar to the mark.  See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004):

 

the disputed domain names are confusingly similar to Complainant’s … marks.  Each disputed domain name contains the … or … marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.

 

See also 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.”).

 

Further 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 therefore finds that Policy ¶ 4(a)(i) has been established.

 

Rights or Legitimate Interests

 

Once a complainant has met its prima facie burden of demonstrating that a respondent has no rights to or legitimate interests in a contested domain name, the burden shifts to that respondent to show that it nonetheless has such rights or interests.  See, for example, 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 made the required prima facie showing that Respondent lacks rights to or legitimate interests in the disputed domain name. Respondent has failed to respond to the allegations of the Complaint filed in this proceeding.  This failure permits us to presume that Respondent lacks any rights to or 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.

 

Notwithstanding Respondent’s failure to confront the assertions of the Complaint, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determination whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <statefarminsurancejobs.org> domain name, and that Complainant has not authorized Respondent to register the disputed domain name or to use the State Farm service mark for Respondent’s business purposes.  Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Koval Ivan,” which does not resemble the <statefarminsurancejobs.org> domain name.  On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and therefore had no rights to or legitimate interests in that domain name within the meaning of Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in the domain as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the contested domain name).

 

We next note that Complainant also alleges, without objection from Respondent, that Respondent is not engaging in a bona fide offering of goods or services by means of the use of the contested domain name, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain.  It is therefore uncontested that Respondent’s <statefarminsurancejobs.org> domain name resolves to a website offering commercial recruitment services purporting to be for employment opportunities with Complainant, as well as links to other unrelated third-party sites from which Respondent presumably receives referral fees.  This usage does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that a respondent’s commercial use of a contested domain name suggested that that respondent lacked rights to or legitimate interests in the domain); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), finding that:

 

using the confusingly similar … domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

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

 

Registration and Use in Bad Faith

 

It is evident from the record that Respondent registered and is using the <statefarminsurancejobs.org> domain name in bad faith because of the commercial nature of the site.  Respondent’s use of the contested domain name, which is confusingly similar to Complainant’s STATE FARM service mark, to offer commercial recruitment services simulating job opportunities with Complainant’s business, as well as links to unrelated third-party websites, all presumably for Respondent’s pecuniary benefit, evidences that Respondent has registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where that respondent used a contested domain name to attract Internet users to its commercial website); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constituted bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).

 

For this reason, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

 

Terry F. Peppard, Panelist

Dated:  May 5, 2011

 

 

 

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