State Farm Mutual Automobile Insurance Company v. Steve Allen
Claim Number: FA1107001397668
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Steve Allen (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thestatefarmbayouclassic.com>, <thestatefarmbayouclassic.net>, and <thestatefarmbayouclassic.org>, registered with FastDomain, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 8, 2011, FastDomain, Inc confirmed by e-mail to the National Arbitration Forum that the <thestatefarmbayouclassic.com>, <thestatefarmbayouclassic.net>, and <thestatefarmbayouclassic.org> domain names are registered with FastDomain, Inc and that Respondent is the current registrant of the names. FastDomain, Inc has verified that Respondent is bound by the FastDomain, Inc 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 July 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@thestatefarmbayouclassic.com, postmaster@thestatefarmbayouclassic.net, and postmaster@thestatefarmbayouclassic.org. Also on July 8, 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 August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thestatefarmbayouclassic.com>, <thestatefarmbayouclassic.net>, and <thestatefarmbayouclassic.org> domain names are confusingly similar to Complainant’s STATE FARM BAYOU CLASSIC mark.
2. Respondent does not have any rights or legitimate interests in the <thestatefarmbayouclassic.com>, <thestatefarmbayouclassic.net>, and <thestatefarmbayouclassic.org> domain names.
3. Respondent registered and used the <thestatefarmbayouclassic.com>, <thestatefarmbayouclassic.net>, and <thestatefarmbayouclassic.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a large provider of insurance and financial services. Complainant owns a multitude of trademark registrations with the United States Patent and Trademark Office (“USPTO”) relating to its STATE FARM mark, including STATE FARM BAYOU CLASSIC (e.g., Reg. No. 2,198,246 registered October 20, 1998). Complainant uses the mark to promote an annual football game that it sponsors.
Respondent, Steve Allen, registered the disputed domain names on April 2, 2011. The disputed domain names resolve to commercial websites where Respondent offers its artwork for sale.
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.
Under Policy ¶ 4(a)(i), Complainant is required to establish its rights in the STATE FARM BAYOU CLASSIC mark. Complainant has submitted trademark registration certificates which indicate that it is the owner of the mark and it is duly registered. The Panel finds that Complainant has effectively established its rights in the STATE FARM BAYOU CLASSIC mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (e.g., Reg. No. 2,198,246 registered October 20, 1998). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant claims that Respondent’s disputed domain names are confusingly similar to its STATE FARM BAYOU CLASSIC mark. The disputed domain names include the entire mark while adding the generic term “the” and separately adding the generic top-level domains “.com,” “.net,” and “.org.” The disputed domain names also remove all of the spaces in the mark. The Panel finds that these changes are insufficient to mitigate a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds Complainant has established Policy ¶ 4(a)(i).
The Panel finds that Complainant has offered sufficient evidence against Respondent to have met its prima facie burden under Policy ¶ 4(a)(ii). Because of that showing, Respondent now bears the onus of proving that it has rights or legitimate interests in the disputed domain names. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). The Panel may assume Respondent lacks rights or legitimate interests in the disputed domain names due to its failure to tender a Response. 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.”). Nonetheless, the Panel will still examine the entire record before making a determination under Policy ¶ 4(a)(ii) regarding Respondent’s rights or legitimate interests in the disputed domain names according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “Steve Allen.” No information on the record suggests, implies, or directly shows that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services through the disputed domain names nor is it making a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names all resolve to its own commercial websites where it offers its own products, unrelated to Complainant, for sale. The Panel finds that Respondent’s diversion of Internet users to its own website to sell goods unrelated to Complainant’s business does not qualify as 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). See The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute 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)).
The Panel finds Complainant has established Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed domain names for its own commercial gain constituting bad faith registration and use. Respondent’s disputed domain names resolve to websites offering its artwork for sale. Respondent presumably generates revenue from selling the artwork. The Panel finds that Respondent is attempting to gain commercially from the confusingly similar domain names constituting bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Complainant has established 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 <thestatefarmbayouclassic.com>, <thestatefarmbayouclassic.net>, and <thestatefarmbayouclassic.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 4, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page