national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Cbeyond

Claim Number: FA1205001446683

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company   (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Cbeyond (“Respondent”), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alikhalifastatefarm.com>, registered with Tucows.com.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2012; the National Arbitration Forum received payment on May 31, 2012.

 

On June 1, 2012, Tucows.com confirmed by e-mail to the National Arbitration Forum that the <alikhalifastatefarm.com> domain name is registered with Tucows.com and that Respondent is the current registrant of the name.  Tucows.com has verified that Respondent is bound by the Tucows.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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@alikhalifastatefarm.com.  Also on June 4, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant makes the following contentions:

a)    Complainant has rights in the STATE FARM mark which it uses in connection with insurance and financial services;

b)    Complainant has a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996);

c)    The <alikhalifastatefarm.com> domain name is confusingly similar to the STATE FARM mark;

d)    Respondent is not commonly known by the <alikhalifastatefarm.com> domain name;

e)    The <alikhalifastatefarm.com> domain name originally resolved to the website of Nations Travel;

f)     The <alikhalifastatefarm.com> domain name is currently inactive;

g)    Respondent registered and is using the <alikhalifastatefarm.com> domain name to create customer confusion as to the source of the disputed domain name;

h)    Respondent had known or should have known about Complainant’s rights in the STATE FARM mark prior to the registration of the <alikhalifastatefarm.com> d

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.     Complainant has rights in its STATE FARM mark.

2.    Respondent’s <alikhalifastatefarm.com> domain name is confusingly similar to complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name 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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the STATE FARM mark. Complainant claims that it owns a registration for the STATE FARM mark (Reg. No. 1,979,585 registered June 11, 1996) with the USPTO used in connection with financial and insurance services. The panel in Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), held that the registration of a mark with a federal trademark authority is evidence of rights in the mark. Therefore, the Panel  finds that Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i).

 

Complainant also asserts that Respondent’s <alikhalifastatefarm.com> domain name is confusingly similar to the STATE FARM mark. The Panel finds that Respondent’s addition of the string of letters “alikhalifa” fails to make the <alikhalifastatefarm.com> domain name distinct from Complainant’s mark. See L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (finding that <xxxbarelylegal.com> domain name to be confusingly similar to the complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition). The Panel also finds that Respondent’s deletion of the space in the STATE FARM mark and the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to the purposes of a Policy ¶ 4(a)(i) determination. 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.”). Therefore, the Panel finds that Respondent’s <alikhalifastatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that Respondent is not commonly known by the <alikhalifastatefarm.com> domain name. Complainant provides the Panel with the WHOIS record for the disputed domain name which lists “Cbeyond” as the domain name registrant. Additionally, Complainant argues that Respondent is not authorized to sell products, engage in sponsorships or services for or on behalf of Complainant, and is not an independent contractor agent of Complainant. The panel in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), held that the information on record, including the WHOIS record, is evidence of whether a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <alikhalifastatefarm.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent’s previous use of the <alikhalifastatefarm.com> domain name was not one that gave Respondent rights or legitimate interests in the disputed domain name. Complainant claims that the <alikhalifastatefarm.com> domain name previously resolved to the website of Nations Travel, which appears from the screenshots provided to be a website unrelated to Complainant’s work with the STATE FARM mark. Panels have found that the resolution of a disputed domain name to an unrelated website is not a use within the bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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). Therefore, the Panel finds that Respondent’s previous use of the <alikhalifastatefarm.com> domain name was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

Complainant next asserts that the current non-use of the <alikhalifastatefarm.com> domain name is not one which provides Respondent with rights or legitimate interests. Complainant contends that the <alikhalifastatefarm.com> domain name simply displays a message saying, “the web page cannot be displayed.” Previous panels have held that the holding of an inactive disputed domain name does not qualify as a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See 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). Therefore, the Panel finds that Respondent’s non-use of the <alikhalifastatefarm.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and previously used the <alikhalifastatefarm.com> domain name in bad faith. Complainant asserts that Respondent intentionally caused confusion as to the source of the disputed domain name, and the <alikhalifastatefarm.com> domain name is commercially gainful to Respondent. Complainant asserts that the <alikhalifastatefarm.com> domain name is confusingly similar to the STATE FARM mark and that the previous use of the disputed domain name was to resolve to the website of Nations Travel. The screenshot provided by Complainant suggests that Nations Travel is a website unrelated to Complainant’s business. Therefore, the Panel  finds that Respondent registered and used the <alikhalifastatefarm.com> domain name in bad faith in order to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

Complainant contends that Respondent’s current non-use of the <alikhalifastatefarm.com> domain name is evidence of bad faith registration and use. Complainant asserts that the <alikhalifastatefarm.com> domain name resolves to a website which features a “the web page cannot be displayed” message. Panels have found that the non-use of a disputed domain name is evidence of bad faith. See 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). Therefore, the Panel finds that Respondent’s registration and non-use of the <alikhalifastatefarm.com> domain name is a product of bad faith under Policy ¶ 4(a)(iii).

 

Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the STATE FARM mark prior to registration of the domain names because of Complainant's long-standing trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <alikhalifastatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 16, 2012

 

 

 

 

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