State Farm Mutual Automobile Insurance Company v. Leighton Alan Holdings
Claim Number: FA0512000616915
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Leighton Alan Holdings (“Respondent”), P.O. Box 3321, Road Town, VG 00000.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bigfindstatefarminsurance.info>,
registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 30, 2005.
On January 05, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bigfindstatefarminsurance.info> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bigfindstatefarminsurance.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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." 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:
Complainant is a well-known insurance provider, which has operated under the name “State Farm” since 1930.
Complainant registered its STATE FARM service mark with the United States Patent and Trademark Office (“USPTO”) in 1996.
Complainant has operated its own website, under the <statefarm.com> domain name since 1995.
Complainant first became aware in June 2005 that Respondent had registered the <bigfindstatefarminsurance.info> domain name.
Internet users accessing the <bigfindstatefarminsurance.info> domain name are taken to an “under construction” web page with no active content.
Respondent is not commonly by the disputed domain name.
Complainant has not authorized or licensed Respondent to employ its famous mark in an Internet domain name or otherwise.
Respondent’s <bigfindstatefarminsurance.info> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
Respondent does not have any rights or legitimate interests in the domain name <bigfindstatefarminsurance.info>.
Respondent registered and is using the <bigfindstatefarminsurance.info> domain name in bad faith.
B. 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 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."
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.”).
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:
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.
Complainant’s Registration of the STATE FARM service mark with the USPTO and CIPO establishes its rights in the mark, pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”; see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Because Respondent’s <bigfindstatefarminsurance.info> domain name incorporates Complainant’s STATE FARM mark in its entirety and merely adds several generic words (“insurance,” “big” and “find”), the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark. The addition of common words to Complainant’s registered mark has no bearing on the “confusingly similar” inquiry under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name is confusingly similar to the Complainant's trade mark ‘AXA’ because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”).
The inclusion of top level domain “.info” in the disputed domain name does not negate the confusingly similar character of Respondent’s domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie showing in support of its allegation that Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the burden has shifted to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent’s has failed to respond to the Complaint, the Panel may from that fact alone, and it does, therefore, infer, that Respondent does not have rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond).
Additionally, Complainant alleges, and Respondent does not deny, that Respondent has failed to use the disputed domain name in connection with any active web content other than the “parking page” placeholder set by the Registrar. The Panel thus finds that such conduct is neither a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii)”); see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant also alleges, without contradiction by
Respondent, that Respondent is not authorized to use its mark. Likewise, there
is no evidence of record that Respondent is commonly known by the <bigfindstatefarminsurance.info>
domain name. Thus, Respondent has
not established rights or legitimate interests in the domain name <bigfindstatefarminsurance.info>
pursuant to Policy ¶ 4(c)(ii). See
Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003):
Respondent has registered the domain name under the name ‘Ilyoup Paik
a/k/a David Sanders.’ Given the WHOIS domain name registration information,
Respondent is not commonly known by the [<awvacations.com>] domain name.
See also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that, where “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name,” that is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant charges that Respondent’s <bigfindstatefarminsurance.info> domain name, which is confusingly similar to Complainant’s well-known STATE FARM mark, directs Internet users to an inactive website. In the absence of a denial of this accusation, the panel interprets Respondent’s passive holding of the disputed domain name as evidence that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where, among other things, a respondent made no use of the domain name <winegallo.com>); see also TV Globo Ltda. v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) a respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) the respondent failed to develop the site).
Finally, it is evident from the record in this proceeding
that Respondent registered the contested domain name with at least constructive
knowledge of Complainant’s rights in its STATE FARM mark by virtue of Complainant’s
prior registration of that mark with the United States Patent and Trademark
Office. It has often been held, and the
Panel finds, that, in the circumstances here present, registration of a
confusingly similar domain name despite such constructive knowledge evidences
bad faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bigfindstatefarminsurance.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 16, 2006
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