State Farm Mutual Automobile Insurance Company v. bambang basuki
Claim Number: FA1211001469717
Complainant is State Farm Mutual Automobile Insurance Company (hereinafter “Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is bambang basuki (hereinafter “Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmrentersinsurancenyc.org>, registered with GoDaddy.com, LLC.
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 November 5, 2012; the National Arbitration Forum received payment on November 5, 2012.
On November 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmrentersinsurancenyc.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 6, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of November 26, 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, adminis-trative, and billing contacts, and to postmaster@statefarmrentersinsurance-nyc.org. Also on November 6, 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 December 13, 2012, pursuant to Complainant's request to have the dispute decided 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 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
Complainant is a leading member of the insurance and financial services industries.
Complainant operates a website at <statefarm.com>, which offers information relating to insurance and financial services products, consumer information and information about its independent contractor agents.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the STATE FARM INSURANCE service mark (includ-ing Reg. No. 1,125,010, registered September 11, 1979).
Respondent registered the disputed domain name on August 28, 2012.
Respondent’s <statefarmrentersinsurancenyc.org> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not associated or affiliated with or sponsored by Complainant.
Complainant has not authorized Respondent to register or use the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent has offered to sell the disputed domain name to Complainant for a profit.
Respondent registered and uses the disputed domain name to create among internet users the impression of an association with Complainant by misleading them into believing that they will receive information regarding Complainant’s business, whereas they are instead sent to a webpage with blog posts on various business and financial topics.
Respondent has registered and is using the disputed domain name in bad faith.
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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 its STATE FARM INSURANCE service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Vivendi Universal Games v. XBNet-Ventures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Indonesia). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a re-spondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning then to the central question arising under Policy ¶ 4(a)(i), we are per-suaded from our review of the record that Respondent’s contested domain name <statefarmrentersinsurancenyc.org> is confusingly similar to Complainant’s STATE FARM INSURANCE service mark. The domain name includes the entire mark, merely eliminating the spaces between the terms of the mark and adding the descriptive term “renters,” which relates to an aspect of Complainant’s business, plus the geographic abbreviation “nyc,” which stands for “New York City,” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, do not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to a UDRP complainant’s AIG mark failed to differentiate the re-sulting domain name from the mark under Policy ¶ 4(a)(i) because the appended term related to that complainant’s business).
See also, with regard to alterations made to the mark of another in forming a domain name by the addition of geographic references, Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).
Finally, see U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden 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,
Complainant argues that Respondent has not been commonly known by the disputed domain name that Respondent is not associated or affiliated with or sponsored by Complainant, and that Complainant has not authorized Respond-ent to register the disputed domain name. Moreover, the pertinent WHOIS in-formation identifies the registrant of the disputed domain name only as “bambang basuki,” which does not resemble the domain name. On this record, we con-clude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com>, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, includ-ing the relevant WHOIS information, suggesting that that respondent was com-monly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has registered and uses the disputed domain name to create the false impression among Internet users of an association with Complainant, and to profit from the sale of the domain name to Complainant. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Re-spondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent registered and uses the disputed domain name to give the impression to Internet users that they will receive information regarding Complainant’s business, whereas they are instead directed to a webpage with blog posts on various business and financial topics. This employment of the disputed domain name demonstrates bad faith regis-tration and use under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that a respondent showed bad faith in the registration and use of a domain name under Policy ¶ 4(b)(iv) where that respondent used a complainant’s mark in the domain name in order to attract Internet users to that respondent's resolving website).
For this reason, 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 <statefarmrentersinsurancenyc.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 27, 2012
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