State Farm Mutual Automobile Insurance Company v. SafeProperty Ltd.
Claim Number: FA0702000924544
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmvault.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2007.
On February 26, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <statefarmvault.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 March 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2007 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@statefarmvault.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 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 engages in business
in both insurance and the financial services industry.
Complainant holds a trademark
registered with the United States Patent and Trademark Office for the STATE
FARM mark (Reg. No. 1,979,585, issued June 11, 1996).
Respondent is not authorized
to use the STATE FARM mark.
Respondent, SafeProperty Ltd., registered the <statefarmvault.com> domain name on October 20, 2006.
Respondent is not making any use of the disputed domain name.
Respondent’s <statefarmvault.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Respondent does not have any rights to or legitimate interests in the domain name <statefarmvault.com>.
Respondent registered and uses the <statefarmvault.com> 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 trademark 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 a 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 trademark with the United States Patent and Trademark Office (“USPTO”) substantially predates Respondent’s registration of the domain name <statefarmvault.com>. Under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers upon Complainant rights in that mark. Therefore, Complainant has established rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Innomed Tech., 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 <statefarmvault.com>
domain name incorporates Complainant’s STATE FARM mark in its entirety and merely
adds the generic word “vault” as well as the generic top-level domain (“gTLD”)
“.com.” Complainant’s STATE FARM mark
remains the predominant portion of the disputed domain name, and the additions
of a generic word and gTLD fail to distinguish the disputed domain name from
Complainant’s mark under Policy ¶ 4(a)(i). Therefore, Respondent’s <statefarmvault.com> domain name is
confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the <statefarmvault.com> domain name. Once Complainant has made out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does nonetheless have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by a complainant that a respondent does not have rights to or legitimate interests in a challenged domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist). Although Respondent has not responded to the Complaint, the Panel will examine the record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in its domain name pursuant to Policy ¶ 4(c).
We begin by noting that there is no evidence in the record indicating that Respondent is commonly known by the <statefarmvault.com> domain name. The WHOIS information identifies Respondent as “SafeProperty Ltd.,” and Complainant alleges that Respondent is not authorized to use the STATE FARM mark. Therefore, we conclude that Respondent is not commonly known by the <statefarmvault.com> domain name pursuant to Policy ¶ 4(c)(ii). On the point, see, for example, M. Shanken Comm. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
We also note that Complainant alleges, and Respondent does
not deny, that Respondent is not making any use of the <statefarmvault.com> domain name. Respondent’s failure to make use of the disputed domain name does not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See State Fair of
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
It is undisputed on the record before us that Respondent is not making any active use of the <statefarmvault.com> domain name, and there is no indication that Respondent intends to make active use of the domain name. In the circumstances here presented, that is sufficient to permit us to conclude that Respondent registered and uses the <statefarmvault.com> domain name in bad faith within the meaning of 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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name or website that connects with the domain name, and that such non-use of a domain name permits an inference of registration and use in bad faith).
In addition, it appears that Respondent registered the <statefarmvault.com> domain name with at least constructive knowledge of
Complainant’s rights in the STATE FARM trademark by virtue of Complainant’s
prior registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of 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
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarmvault.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 11, 2007
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