State Farm Mutual Automobile Insurance Company v. John Rinaldi d/b/a KathyRinaldiHope
Claim Number: FA0602000649491
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is John Rinaldi d/b/a KathyRinaldiHope (“Respondent”), 259 W. 4th St., New York, NY 10014.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmus.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2006.
On February 22, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmus.com> 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 February 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@statefarmus.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 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <statefarmus.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmus.com> domain name.
3. Respondent registered and used the <statefarmus.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is an international insurance and financial services company. Complainant has used the STATE FARM mark since 1930 and has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996). Complainant also holds trademark registrations for the STATE FARM INSURANCE, STATE FARM BANK, STATE FARM MUTUAL FUNDS and STATE FARM FEDERAL SAVINGS BANK marks, among others. Complainant has maintained a website in connection with its business under the <statefarm.com> domain name since 1995.
Respondent registered the <statefarmus.com> domain name on June 30, 2005. Internet users who access this domain name are directed to a website with no active content.
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 has established rights in the STATE FARM mark
through its registration with the USPTO.
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 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 <statefarmus.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because it wholly incorporates Complainant’s STATE FARM mark without the space between the terms and with the addition of a geographic term and the top-level domain “.com.” Neither the removal of spaces from Complainant’s mark, nor the addition of a top-level domain, negates the fact that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The addition of a geographic term also fails to adequately distinguish Respondent’s domain name from Complainant’s mark. See JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <statefarmus.com> domain name. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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.”).
Respondent is using the <statefarmus.com> domain name, which is confusingly similar to Complainant’s STATE FARM mark, to direct Internet users to a web page with no active content. The Panel finds that registration of the disputed domain name without demonstrable preparations for using it 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 the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
Complainant asserts that Respondent is not associated with,
affiliated with, or sponsored by Complainant, and that Complainant did not
authorize Respondent to register the <statefarmus.com> domain name
or use Complainant’s mark for any purpose.
There is no information in the WHOIS database implying that Respondent
is commonly known by the <statefarmus.com> domain name. Therefore, Respondent has not established
rights or legitimate interests in the <statefarmus.com> domain
name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <statefarmus.com> domain name,
which is confusingly similar to Complainant’s STATE FARM mark, directs Internet
users to an inactive website. Without
any evidence of demonstrable preparations to use the domain name, the Panel finds
that such nonuse of the disputed domain name is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Telstra Corp. v. Nuclear
Marshmallows, D2000-0003 (WIPO
Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by
the Respondent to amount to the domain name being used in bad faith.”).
The Panel determines that Respondent had constructive notice of Complainant’s rights in the STATE FARM mark by virtue of Complainant’s registration of the mark with the USPTO. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). Respondent registered the <statefarmus.com> domain name despite having constructive notice of Complainant’s rights in the STATE FARM mark. Therefore, Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").
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 <statefarmus.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 6, 2006
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