State Farm Mutual Automobile Insurance Company v. Mario Delia
Claim Number: FA1210001466960
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois. USA. Respondent is Mario Delia (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsurancellc.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 15, 2012, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <statefarminsurancellc.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 October 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@statefarminsurancellc.com. Also on October 15, 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 November 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarminsurancellc.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <statefarminsurancellc.com> domain name.
3. Respondent registered or used the <statefarminsurancellc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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.”).
Complainant contends that it has rights in the STATE FARM INSURANCE mark. Complainant asserts that it is a financial and insurance services company which uses the STATE FARM INSURANCE mark to advertise its services. As evidence of its rights, Complainant puts forth evidence that it is the owner of the USPTO registrations for the STATE FARM INSURANCE mark (e.g., Reg. No. 1,125,010 registered September 11, 1979). See Complainant’s Exhibit 1. Therefore, the Panel finds that Complainant has rights in the STATE FARM INSURANCE mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <statefarminsurancellc.com> domain name is confusingly similar to the STATE FARM mark. The Panel notes that the differences between the mark and the disputed domain name are the deletion of the spaces between the terms of the mark, the addition of the letters “llc,” and the addition of the generic top-level domain (“gTLD”) “.com.” In Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002), the Panel found that the addition of letters to a mark in a disputed domain name does not distinguish the two from each other. Further, the panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), held that the deletion of spaces in a mark and the addition of a generic top-level domain (“gTLD”) are required elements of domain names and thus have no effect on a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s <statefarminsurancellc.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark under Policy ¶ 4(a)(i).
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 asserts that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent is not associated with, affiliated with, or sponsored by Complainant, and Complainant did not authorize Respondent to register the domain name or to use the STATE FARM INSURANCE mark for Respondent’s business purposes. Additionally, Complainant alleges that Respondent does not do business under the name “State Farm” and does not have intellectual property rights in the disputed domain name. The Panel notes that the WHOIS record for the <statefarminsurancellc.com> domain name lists “Mario Delia” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <statefarminsurancellc.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s use of the <statefarminsurancellc.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant provides the Panel with evidence that the disputed domain name resolves to a website that displays the message “Apache is functioning normally” and no other content and thus is inactive. See Complainant’s Exhibit 3. Panels have previously held that the passive holding of a disputed domain name is evidence of a lack of rights and legitimate interests. 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 failure to use the <statefarminsurancellc.com> domain name satisfies neither Policy ¶ 4(c)(i) nor a Policy ¶ 4(c)(iii) as it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant contends that the <statefarminsurancellc.com> domain name was registered and is being used in bad faith. Complainant contends that Respondent registered the name to create the impression of association with Complainant and its services, to trade off the goodwill associated with the STATE FARM INSURANCE mark, and to create initial interest confusion for individuals looking for information about Complainant. Complainant demonstrated that the disputed domain name’s resolving website is not being used except for the display of the message “Apache is functioning normally.” The Panel finds that Respondent is making a commercial use of passively holding the disputed domain name and finds that Respondent registered the <statefarminsurancellc.com> domain name in bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant alleges that the disputed domain name resolves to a website with no content other than a message that states, “Apache is functioning normally.” Complainant contends that Respondent is not using and has not made any demonstrable preparations to use the disputed domain name in any way. Complainant asserts that Respondent’s failure to actively use the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant argues that the <statefarminsurancellc.com> domain name is used in bad faith. Policy ¶ 4(b) lists four factors which should be considered when making a determination regarding bad faith. However, the Panel notes that this list was not meant to be exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Therefore, the Panel determines whether the <statefarminsurancellc.com> domain name was registered and is used in bad faith based on the totality of the circumstances.
Complainant asserts that Respondent knew or should have known of Complainant’s rights in the STATE FARM INSURANCE mark. The Panel notes that Respondent registered the <statefarminsurancellc.com> domain name on July 19, 2012, and Complainant registered the STATE FARM INSURANCE mark with the USPTO on September 11, 1979. Complainant argues that its long-term use of the STATE FARM INSURANCE mark gave Respondent notice of Complainant’s rights in the mark. While panels have generally found that constructive notice is not enough to find bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s rights and finds that Respondent registered and is using the <statefarminsurancellc.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminsurancellc.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 30, 2012
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