State Farm Mutual Automobile Insurance Company v. Artin Afsharjavan d/b/a Continental Alliance Corp.
Claim Number: FA0602000644537
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”). Respondent is Artin Afsharjavan d/b/a Continental Alliance Corp. (“Respondent”), 450 Reaserch Court, Rockville, MH 20850.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmlatino.com>, registered with Go Daddy Software, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 14, 2006.
On February 14, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmlatino.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 February 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 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@statefarmlatino.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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:
1. Respondent’s <statefarmlatino.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmlatino.com> domain name.
3. Respondent registered and used the <statefarmlatino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company,
owns several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the STATE FARM mark. Complainant first registered the STATE FARM mark with the USPTO
on June 11, 1996 (Reg. No. 1,979,585).
Since at least 1930, Complainant has engaged in the business
of insurance and financial services in the United States. In the course of its business, Complainant
has made significant expenditures of time, effort, and finances to develop the
goodwill associated with the STATE FARM mark.
As part of its business, Complainant provides Internet consumers with
information about its insurance and financial services by operating an Internet
website located at the <statefarm.com> domain name.
Respondent registered the <statefarmlatino.com> domain name on January 18, 2006. Respondent has used the disputed domain name to operate a website providing information and links to insurance companies in direct competition with Complainant. Additionally, the website to which the disputed domain name resolves features a link offering the domain name for sale by Respondent. When contacted by Complainant via e-mail regarding its use of the <statefarmlatino.com> domain name, Respondent offerred to sell the disputed domain name to Complainant for $3,452.
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:
(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.
Complainant’s rights in the STATE FARM mark are established
pursuant to Policy ¶ 4(a)(i) by Complainant’s registration of its mark with the
USPTO. See VICORP Restaurants, Inc.
v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant
has established rights in the BAKERS SQUARE mark by registering it with the
United States Patent and Trademark Office (“USPTO”).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <statefarmlatino.com> domain name incorporates Complainant’s mark in its entirety, adding only the word “latino” and the generic top-level domain “.com.” The addition of a descriptive term to Complainant’s mark does not negate the confusing similarity between the disputed domain name and Complainant’s mark. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds Complainant has presented a prima facie case and will evaluate whether the evidence on record demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent registered the <statefarmlatino.com> domain name under the name “Artin Afsharjavan d/b/a Continental Alliance Corp.,” and no evidence exists in the record to suggest that Respondent is commonly known by the <statefarmlatino.com> domain name. Therefore, Respondent has not established rights or legitimate interests in the disputed domain name 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 G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Additionally, Respondent’s disputed domain name resolves to a website offering the domain name registration for sale and providing a link to a third-party website through which an Internet user could bid for the domain name registration. When contacted by Complainant, Respondent offered to sell the domain name registration to Complainant for $3,452. In Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), the respondent registered the disputed domain name and continually advertised the domain name registration for sale. The panel held that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name. Therefore, Respondent’s offering of the disputed domain name for sale demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Furthermore, Respondent’s <statefarmlatino.com> domain name, which is confusingly
similar to Complainant’s STATE FARM mark, resolves to a website that provides
links to third-party websites in competition with Complainant. Respondent’s use of Complainant’s mark in
the disputed domain name suggests that Respondent registered the disputed
domain name to redirect Internet users who are looking for Complainant’s
services to unrelated websites for the benefit of referral fees. Consequently, Respondent’s use of the
disputed domain name does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain name pursuant to 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 Respondent'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).”); see also
Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <statefarmlatino.com> domain name, which incorporates Complainant’s STATE FARM mark, to redirect Internet users to Respondent’s website. The Panel finds that such use creates confusion regarding Complainant’s affiliation with the resulting website, infringes upon the goodwill connected to Complainant’s mark and evidences bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Moreover, Complainant has submitted evidence indicating that Respondent is using the <statefarmlatino.com> domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant in excess of its out-of-pocket costs directly related to the domain name. Respondent has offered to transfer the disputed domain name registration to Complainant for $3,452. Thus, the evidence on record suggests that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmlatino.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 28, 2006
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