national arbitration forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Joe Daleo / eshots, Inc.

Claim Number: FA1311001529005

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by State Farm Mutual Automobile Insurance Company, Illinois, USA.  Respondent is Joe Daleo / eshots, Inc. (“Respondent”), represented by Bryan P. Sugar of Ungaretti & Harris, Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmstylecloset.com>, registered with GoDaddy.com, LLC.

 

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.

 

Dr. Katalin Szamosi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2013; the National Arbitration Forum received payment on November 8, 2013.

 

On November 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <statefarmstylecloset.com> 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 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2013 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@statefarmstylecloset.com.  Also on November 11, 2013, 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 November 14, 2013.

 

On November 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <statefarmstylecloset.com> domain name is identical or confusingly similar to Complainant’s STATE FARM mark. In support of this Complainant asserts that:
• Complainant is a nationally-known company in the USA that has been doing business using the STATE FARM mark since 1930, and it uses the mark to engage in business in both the insurance and financial services industries,
• it owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the STATE FARM mark (e.g., Reg. No. 1,979,585 registered June 11, 1996),
• the <statefarmstylecloset.com> domain name is clearly confusingly similar to the STATE FARM mark. Furthermore numerous panels have previously held that the use of the STATE FARM mark in a domain name, even when additional language is added, renders the disputed domain name confusingly similar to the mark.

 

2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that:
• Respondent is not commonly known by the <statefarmstylecloset.com> domain name and has never performed business under this name,
• Respondent is not associated with, affiliated with, or sponsored by Complainant, and Complainant did not authorize Respondent to use the STATE FARM mark for Respondent’s business purposes,
• the <statefarmstylecloset.com> domain name resolves to a website branded with Complainant’s mark containing a registration form collecting personal information from Internet users.

 

3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that:
• <statefarmstylecloset.com> domain name was registered to create the impression of association with Complainant, to trade off the goodwill associated with the STATE FARM mark, and to create initial interest confusion for individuals looking for information about Complainant,
• <statefarmstylecloset.com> domain name gives the impression that interested individuals will receive information regarding Complainant’s services,  while the fact is that individuals are sent to a website containing a registration for collecting personal information.

 

B. Respondent

Respondent consents to the transfer of the <statefarmstylecloset.com> domain name.

 

FINDINGS

The Panel will not make any finding of fact for the reasons explained below.

 

DISCUSSION

 

Preliminary Issue: Consent to Transfer

 

The Panel is of the view that since the Complainant requested the transfer of the disputed domain name and Respondent has not contested and agreed to the transfer the domain name in question to Complainant, the Panel foregoes the traditional UDRP analysis and orders an immediate transfer of the <statefarmstylecloset.com> domain name. 

 

See 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.”); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”).

 

DECISION

Given the common request of the parties, the Panel concludes that relief shall be GRANTED.

 

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

 

 

Dr. Katalin Szamosi, Panelist

Dated:  December 6, 2013.