State Farm Mutual Automobile Insurance Company v. Ivan Hoo
Claim Number: FA0609000804985
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company, One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Ivan Hoo (“Respondent”), 341 Upper Bukit Timah Road #10-03, Singapore 588195, SG.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmcapital.com>, registered with Direct Information PVT LTD d/b/a Publicdomainregistry.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2006.
On September 27, 2006, Direct Information PVT LTD d/b/a Publicdomainregistry.com
confirmed by e-mail to the National Arbitration Forum that the <statefarmcapital.com> domain name is registered with Direct Information PVT LTD d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Direct Information PVT LTD d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information PVT LTD d/b/a Publicdomainregistry.com 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 September 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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@statefarmcapital.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <statefarmcapital.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmcapital.com> domain name.
3. Respondent registered and used the <statefarmcapital.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, has been doing business under the STATE FARM name since 1930 and provides insurance and financial services. Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) on June 11, 1996 (Reg. No. 1,979,585) and has registered numerous other marks containing the phrase “STATE FARM” with the USPTO and foreign trademark offices. Complainant registered its domain name, <statefarm.com>, on May 24, 1996.
Respondent’s <statefarmcapital.com> domain name was registered on June 3, 2006 and currently does not resolve to an active web site.
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 registration of the mark 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.”).
By mere addition of the common term “capital” to the end of Complainant’s mark without any asserted justification for such action, Respondent has failed to sufficiently distinguish the <statefarmcapital.com> domain name from Complainant’s STATE FARM mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). As such, Respondent’s <statefarmcapital.com> domain name is confusingly similar to Complainant’s STATE FARM mark 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). This holding finds further support in the fact that the word “capital” is not only generic, but relates to Complainant’s well-established business of providing insurance and financial services. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
In light of the foregoing analysis, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or legitimate interests in the <statefarmcapital.com> domain name. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption that they have no rights or legitimate interests in the disputed domain name. See 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”). Thus, the Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name constitutes a prima facie case pursuant to Policy ¶ 4(a)(ii).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, despite the presumptive effect of
Respondent’s inaction, the Panel must still analyze the relevant factors under
Policy ¶ 4(c). See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall
draw such inferences’ from the Respondent’s failure to comply with the rules
“as it considers appropriate.”); see also EK Success, Ltd. v. Yi-Chi,
CPR0314 (CPR June 12, 2003) (“[T]he Respondent's
default cannot simply be construed as an admission of the allegations contained
in the Complaint.”). As such, the Panel
will examine the record in order to determine if Respondent has any rights or legitimate
interests in Complainant’s STATE FARM mark under Policy ¶ 4(c).
In connection with registering the
disputed domain name, Respondent simply listed Ivan Hoo c/o N/A as the
registrant. While the record
clearly indicates that Respondent performed this mandatory and perfunctory
task, the record is void of any other attempt by Respondent to establish that
it is commonly known by the <statefarmcapital.com> domain name.
Indeed, given the well-established nature of Complainant’s STATE FARM mark,
Respondent must put forth strong evidence to prevail on this argument. This has simply not been done here. As such, Respondent has no rights or
legitimate interests under Policy ¶ 4(c)(ii).
See 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>.”); Xerox
Corp. v. Anti-Globalization Domains, FA
210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent
to demonstrate that it had rights or legitimate interests in the domain name
given Complainant's long and substantial use of its unique and famous XEROX
mark.”).
Moreover, Respondent’s <statefarmcapital.com> domain name does not currently resolved to an active web site; likewise, Respondent made no attempt to associate the disputed domain name with a commercial enterprise or a legitimate noncommercial or fair use. In short, Respondent simply registered the <statefarmcapital.com> domain name and did nothing more. As such, Respondent’s use of the disputed domain name does not consitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ (4)(c)(iii). See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims); LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A the respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise).
In light of the foregoing analysis, the Panel finds that Respondent has failed to show any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). As such, Complainant has satisfied policy ¶ 4(a)(ii).
Under Policy ¶ 4(a)(iii), Complainant need only establish one of any number of patterns of conduct that give rise to an inference of Respondent’s bad faith registration and use of Complainant’s mark. Examples of such conduct are set forth in Policy ¶ 4(b), however, Complainant’s inability to plead facts that fall under this section does not dispose of a Policy ¶ 4(a)(iii) analysis. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in ¶ 4(b) of the Policy is not an exhaustive list of bad faith evidence).
The record before the Panel does not support any inferences of Respondent’s good faith use of Complainant’s STATE FARM mark. Respondent has done nothing more than register the domain name. Respondent did not even feign an attempt at utilizing the site for any use – commercial or otherwise. As such, it is reasonable to infer that Respondent registered and used the <statefarmcapital.com> domain name in bad faith. See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Further, in light of Respondent’s failure to respond or appear, no other conceivable justifications for wholly incorporating Complainant’s STATE FARM mark into its <statefarmcapital.com> domain name could be reasonably inferred. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and thus has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmcapital.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 9, 2006
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