State Farm Mutual Automobile Insurance Company v. Alan Corrado
Claim Number: FA1207001452093
Complainant is State Farm Mutual Automobile Insurance Company (“Complain-ant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Alan Corrado (“Respondent”), Pennsyl-vania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmpremier.com>, registered with GoDaddy.
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.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 6, 2012; the National Arbitration Forum received payment on July 6, 2012.
On July 10, 2012, GoDaddy confirmed by e-mail to the National Arbitration For-um that the <statefarmpremier.com> domain name is registered with GoDaddy and that Respondent is the current registrant of the name. GoDaddy has verified that Respondent is bound by the GoDaddy registration agreement and has there-by agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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 bil-ling contacts, and to postmaster@statefarmpremier.com. Also on July 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 2, 2012, pursuant to Complainant's request to have the dispute de-cided 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 Not-ices, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has been operating its business in the insurance and banking industries under the “State Farm” name since 1930.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office ("USPTO"), for the STATE FARM service mark, including Reg. No. 1,979,585, registered June 11, 1996.
Respondent registered the contested <statefarmpremier.com> domain name on March 28, 2012.
Respondent’s domain name resolves to a website parked with the Registrar that features third-party links to the websites of Complainant’s competitors in the insurance industry.
Respondent has not been commonly known by the disputed domain name and does not have independent intellectual property rights in the domain name.
Respondent is not associated or affiliated with or sponsored by Complainant.
Complainant has not authorized Respondent to register the contested domain name or to use the STATE FARM service mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
The website resolving from the contested domain name displays click-through ads for insurance companies and products operating in competition with the bus-iness of Complainant.
Respondent’s employment of the disputed domain name disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Vert-ical 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 reason-able 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.”
Complainant has rights in the STATE FARM mark under Policy ¶ 4(a)(i) through its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering those marks with the USPTO).
Turning then to the central question under this head of the Policy, we conclude from our review of the record that Respondent’s <statefarmpremier.com> domain name is confusingly similar to the STATE FARM mark. The disputed domain name contains Complainant’s entire STATE FARM mark, absent only the space between its terms, while adding the generic term “premier” and the generic top-level domain (“gTLD”) “.com.” These alterations to Complainant’s mark, made in creating the disputed domain name, are not sufficient to remove the domain name from the realm of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that neither the elimination of spaces between terms of the mark of another in forming a domain name nor the addition of a gTLD establishes distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar to the WESTFIELD mark under Policy ¶ 4(a)(i) because the mark was the dominant element in the domain name).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commen-taries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legiti-mate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the bur-den shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent does not possess intellectual property rights in the domain name, that Respondent is not associated or affiliated with or sponsored by Complainant, and that Complainant has not authorized Respondent to register the contested domain name or to use the STATE FARM service mark. More-over, the pertinent WHOIS information reflects that the domain name registrant is “Alan Corrado,” which does not resemble the disputed domain name. On this record, we conclude that Respondent has not been commonly known by the <statefarmpremier.com> domain name so as to have demonstrated that it has rights to or legitimate interests in that 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 so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant contends, without objection from Respondent, that Respondent lacks rights to or legitimate interests in the disputed domain name in that the domain resolves to a parked website that features third-party links to the websites of Complainant’s competitors in the insurance industry. This use of the domain name is not 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name … currently resolves to a website displaying Complainant’s marks and contains links to Complain-ant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s use of the disputed domain name, as alleged in the Complaint, is disruptive of Complainant’s bus-iness. It therefore stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See, for example, Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names within the contem-plation of Policy ¶ 4(b)(iii) by using them to operate a search engine with links to websites offering the products of a complainant’s commercial competitors).
We are also satisfied from our examination of the record that Respondent knew of Complainant and its rights in the STATE FARM service mark when it regis-tered the contested domain name. This is independent evidence of bad faith registration and use of the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's conten-tion that it did not register a disputed domain name in bad faith, where a panel found that that respondent had knowledge of a complainant's rights in the UNI-VISION mark when registering the domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <statefarmpremier.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2012
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