State Farm Mutual Automobile Insurance Company v. Ruffo Inc. c/o John Ruffo
Claim Number: FA0705000989707
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 <statefarmguild.com>, registered with Go Daddy Software, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 18, 2007.
On May 18, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmguild.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 May 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@statefarmguild.com by e-mail.
Having received no formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. Upon notice of the proceeding, Respondent, on May 22, 2007, sent the Forum an email saying “ Ok . . . the site is gone. I don’t what all this says.” The Forum replied stating the deadline for filing a formal response was June 11, 2007. On May 29, 2007, Respondent emailed the Forum: “Well, I am only 18 years old, I do not know anything about ICANN and I have deleted the website domain and everything.” Respondent, having abandoned the domain name and having failed to file a formal response controverting the allegations of the Complaint, has defaulted.
On June 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <statefarmguild.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmguild.com> domain name.
3. Respondent registered and used the <statefarmguild.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1930, Complainant, State Farm Mutual Automobile Insurance Company, has been providing financial and insurance services under the STATE FARM mark. Complainant has operated a website at the <statefarm.com> domain name since May 24, 1995, where it offers financial and insurance products and services, consumer information, and information on its agents.
Complainant has registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent’s <statefarmguild.com> domain name, registered on October 7, 2006, resolves to a website parked with GoDaddy.com. The website displays links to competing insurance and financial services websites.
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.
As a result of Complainant’s registration of the STATE FARM
mark with the USPTO, the Panel finds that Complainant has established rights in
the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant
had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO); see
also Miller Brewing Co. v. Miller
Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the
complainant had established rights to the MILLER TIME mark through its federal
trademark registrations).
The <statefarmguild.com>
domain name wholly incorporates Complainant’s STATE FARM mark and merely adds
the term “guild” and the generic top-level domain (“gTLD”) “.com.” Panels have consistently held that the mere
addition of another term to a complainant’s mark in a domain name does not
significantly differentiate that domain name from the mark. See
Constellation Wines
The Panel concludes that Complainant has satisfied this element of the Policy.
Under Policy ¶ 4(a)(ii),
Complainant has the initial burden of proof.
It must make a prima facie case
that Respondent lacks rights and legitimate interests in the domain name at
issue and once it has made out a prima
facie case, the burden effectively shifts to Respondent to show 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, the Panel finds that
Complainant has made a prima facie case, and the burden is now upon
Respondent to demonstrate its rights or legitimate interests according to the
elements laid out in Policy ¶ 4(c).
Respondent,
however, has not submitted a Response to this proceeding. As a result, the Panel will presume that
Respondent has no rights or legitimate interests. 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.”); see
also CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to
produce requested documentation supports a finding for the complainant). Nevertheless,
the Panel will still examine the evidence on record to see if Respondent can
establish any rights or legitimate interests according to Policy ¶ 4(c).
The WHOIS information lists “Ruffo Inc. c/o John Ruffo” as the registrant of the <statefarmguild.com> domain name, and there is no other evidence in the record indicating that Respondent is commonly known by the domain name at issue. The Panel thus finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Educ. Broad. 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).
Respondent has not made any demonstrable preparations to use
the <statefarmguild.com> domain
name except to park it with GoDaddy.com, which is displaying links to the
products and services of Complainant’s competitors in the financial and
insurance service industries. Lacking
evidence to the contrary, the Panel presumes that Respondent is receiving
click-through fees for each consumer that is diverted to these competing
websites. Consequently, Respondent’s
conduct does not fall within the parameters of Policy ¶ 4(c)(i)
or ¶ 4(c)(iii), for it is not a bona fide
offering of goods or services, or a legitimate noncommercial or fair
use. See Charles
Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb.
Forum July 17, 2006) (finding that the respondent’s parking of a domain name
containing the complainant’s mark for the respondent’s commercial gain did not
satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see
also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum
Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com>
domain name to redirect Internet users to a website featuring links to travel
services that competed with the complainant was not 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)).
Even if Respondent is not commercially benefiting from its
use of the disputed domain name, its failure to make an active use of the <statefarmguild.com> domain name for
over seven months demonstrates that it lacks rights and legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798
(Apr. 13, 2007) (finding that the respondent lacked rights or legitimate
interests in a confusingly similar domain name that it had not made
demonstrable preparations to use since its registration seven months prior to
the complaint); see also George Weston
Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no
rights of legitimate interests in a domain name under either Policy ¶ 4(c)(i)
or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain
name).
The Panel concludes that Complainant has satisfied this element of the Policy.
Respondent has parked the <statefarmguild.com> domain name with GoDaddy.com, which is displaying links to Complainant’s competitors. Respondent has therefore taken advantage of the confusing similarity between the disputed domain name and Complainant’s STATE FARM mark, and is diverting Internet users to competing websites. Respondent is presumably profiting from this activity, for it has not responded with any evidence to suggest otherwise. Hence, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
In the absence of any commercial
benefit to Respondent, its failure to make an active use of the <statefarmguild.com> domain name
since October 2006 demonstrates bad faith registration and use. The panel in Am. Broad.
Companies, Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28,
2007) concluded that the respondent’s failure to make active use of its domain
name in the three months after its registration indicated that the respondent
registered the disputed domain name in bad faith. Likewise, the panel in Am.
Online, Inc. v.
Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) found bad faith where a respondent did
not use a domain name for six months.
Consequently, Respondent’s lack of activity with respect to the disputed
domain name for a period of seven months provides the Panel with more than
enough evidence to make a finding of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).
The Panel concludes that Complainant has satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmguild.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 25, 2007
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