State Farm Mutual Automobile Insurance Company v. Courtney Bernard
Claim Number: FA1203001435382
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Jeff Saliba of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Courtney Bernard (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmin.net>, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2012; the National Arbitration Forum received payment on March 20, 2012.
On March 23, 2012, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <statefarmin.net> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 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 March 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2012 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@statefarmin.net. Also on March 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on March 27, 2012.
On April 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s registered trademark, STATE FARM.
Respondent has no right or legitimate interest in the disputed domain name. Complainant did not authorize Respondent to register the domain name or to use the STATE FARM trademark for Respondent’s business purposes.
It is believed that Respondent has never been known by or performed business under the domain name at issue. Respondent does not possess independent intellectual property rights in the domain name. In addition, Complainant does not have a contractual arrangement with Respondent that would allow Respondent to offer services under the State Farm name.
Complainant believes that Respondent registered the disputed domain name to create the impression of association with Complainant, its agents, products, sponsorships, and services; to trade off the good will associated with the State Farm name; and/or to create initial interest confusion for individuals looking for information about State Farm. The Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. As of the date of the Complaint, there was no legitimate content associated with the disputed domain name and no demonstrable indication that legitimate content would be forthcoming.
The disputed domain name is clearly intended to attract individuals seeking information on State Farm and create customer confusion as to the source or sponsorship of the website. Complainant sent Respondent cease and desist letters for notification of Respondent’s unauthorized use of the names in question. Failure to comply with Complainant’s cease and desist requests demonstrates Respondent has registered and is using the disputed domain name in bad faith.
Respondent’s use of the disputed domain name constitutes typosquatting and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent knew or should have known of Complainant’s long-term use of the trademark STATE FARM and the long-term use of the domain name <statefarm.com>” The registration of the domain name by Respondent was intended to be in bad faith.
B. Respondent
Respondent’s only communication in this proceeding reads as follows:
Here is the authorization code to transfer ownership. I agree to transfer ownership of www.statefarmin.net. The website has been taken down. I do not have any money to pay. I just want to transfer the ownership and end this. [An authorization code was provided]
Complainant is an Illinois company doing business in the insurance and the financial services industry. Complainant has been doing business under the name “State Farm” since 1930. In 1999 State Farm opened a federally chartered bank known as State Farm Bank.
Complainant owns a Federal registration for the STATE FARM mark, Reg. No. 1,979,585, Reg. Date June 11, 1996, covering underwriting and servicing auto, homeowners, life and fire insurance, in Class 36. The trademark application was filed on May 25, 1995. The applicant stated a first use/first use in commerce 0-0-1930.
On July 23, 2011, Respondent registered the disputed domain name.
On August 9, 2011, October 12, 2011 and March 6, 2012 Complainant sent cease and desist letters via e-mail to Respondent. No response from Respondent was ever received.
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."
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.
Where a respondent unilaterally and unconditionally consents to transfer the domain name in dispute, panels may also issue orders for transfer of disputed domain names without making findings as to Policy ¶ 4(a). As seen above, in its only communication in this proceeding Respondent agreed to transfer the registration of the disputed domain name to Complainant without conditions. Respondent’s stipulation for transfer in the present proceeding means a clear agreement to the remedy requested by Complainant. In similar cases panels granted transfer based on respondent’s consent, such as in Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000) (although in Williams-Sonoma the respondent had not submitted any response). This Panel, like the panel in Williams-Sonoma believes that “the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.” See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Considering that Respondent has stated its unconditional consent to the remedy of transfer requested by Complainant, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain name <statefarmin.net> be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: April 16, 2012
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