State Farm Mutual Automobile Insurance Company v. Shiva Bahuman
Claim Number: FA0705000976597
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 Shiva Bahuman (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <state-farm-settlement.com>, registered with Schlund+Partner Ag.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 3, 2007; the National Arbitration Forum received a hard copy of the Complaint May 4, 2007.
On May 8, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <state-farm-settlement.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag verified that Respondent is bound by the Schlund+Partner Ag registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 31, 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@state-farm-settlement.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <state-farm-settlement.com>, is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate interests in the <state-farm-settlement.com> domain name.
3. Respondent registered and used the <state-farm-settlement.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, has continuously used the STATE MARK mark for more than seventy years in association with its insurance and financial services.
Complainant registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996) and also uses the <statefarm.com> domain name (registered on May 24, 1995) in connection with its business.
Respondent, Shiva Bahuman, registered the disputed domain name August 27, 2006, and is using the <state-farm-settlement.com> domain name to maintain a web directory with links to various third-party websites, including a link to the Sedo website, where the disputed domain name registration is for sale.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 valid trademark registration for the STATE FARM mark, which it holds with the USPTO, is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also VICORP Rests., 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”).”).
Respondent added hyphens and the term “settlement” to
Complainant’s registered mark in the disputed domain name. In Eastman Chemical Co.
v. Patel, FA 524752
(Nat. Arb. Forum Sept. 7, 2005), the panel concluded that addition of a
term descriptive of the complainant’s business, as well as a hyphen and the
generic top-level domain (“gTLD”) “.com,” was insufficient to distinguish the
disputed domain name from the complainant’s mark. Similarly, this Panel does not find the <state-farm-settlement.com>
domain name to be sufficiently distinct from Complainant’s STATE FARM mark. As a result, the disputed domain name is
confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained within the disputed domain name. Complainant has alleged that Respondent has no such rights. Under Policy ¶ 4(a)(ii), Complainant bears the initial burden of making a prima facie case that Respondent lacks rights and legitimate interests in the <state-farm-settlement.com> domain name. If Complainant makes a prima facie case, then the burden shifts to Respondent to prove that it does have rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).
In this case, Respondent failed to take advantage of the opportunity to respond to the Complaint. Consequently, the Panel presumes that Respondent has no rights or legitimate interests in the <state-farm-settlement.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Nevertheless, the Panel examines the record to determine if Complainant has satisfied its burden under the factors listed in Policy ¶ 4(c). The WHOIS information lists “Shiva Bahuman” as the registrant of the <state-farm-settlement.com> domain name, and no evidence in the record suggests that Respondent is commonly known by the domain name in dispute. Accordingly, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Educational Broadcasting Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s website at the <state-farm-settlement.com> domain name displays links to various websites unrelated to Complainant, as well as a link to a website offering the disputed domain name registration for sale. The Panel finds that this use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s offer of the <state-farm-settlement.com> domain name registration for sale on Sedo’s website supports findings that Respondent has registered and is using the disputed domain in bad faith pursuant to Policy ¶ 4(b)(i). In Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000), the panel stated that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.” In Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003), the panel found that when the domain name itself indicates that the domain name is for sale and the sole value of the domain name is “dictated by its relation” to the complainant’s registered mark, it can be inferred that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). In line with these previous cases, this Panel finds that Respondent’s offer to sell the disputed domain name registration supports a finding of bad faith registration and use according to Policy ¶ 4(b)(i).
Furthermore,
Respondent’s <state-farm-settlement.com> domain name resolves to a
website displaying numerous links to third-party websites unrelated to
Complainant. The Panel presumes that
Respondent is earning revenue each time an Internet user clicks on one of these
links and is redirected to a third-party website. Using a confusingly similar domain name in
this manner is indicative of registration and use in bad faith under Policy ¶
4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting from
click-through fees); see also The Univ. of Houston Sys. v.
Salvia Corp., FA 637920 (Nat. Arb. Forum Mar.
21, 2006) (“Respondent is using the
disputed domain name to operate a website which features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. Such use for
Respondent’s own commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant satisfied 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 <state-farm-settlement.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 18, 2007
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