State Farm Mutual Automobile Insurance Company v. Jamal Mallah
Claim Number: FA1507001627254
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is Jamal Mallah (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <state-farm-claim.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2015; the Forum received payment on July 2, 2015.
On June 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <state-farm-claim.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@state-farm-claim.com. Also on July 7, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Thereafter, Respondent emailed the Forum stating that he did not want the domain name.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant contends as follows:
Complainant has registered the STATE FARM mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996). The mark is used in connection with underwriting and servicing auto, homeowners, life and fire insurance.
The <state-farm-claim.com> domain name is confusingly similar to the STATE FARM mark because the domain name contains the entire mark and adds the generic/descriptive word “claim,” hyphenation between words, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage with various click-through hyperlinks which may resolve to competitors of Complainant. The hyperlinks include: “Car Insurance - $19 Month,” “Great Local Auto Rates,” and “Cheaper Renters Insurance”. Such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent registered and used the disputed domain name in bad faith. Respondent has intended to disrupt the business of Complainant by including competing hyperlinks on the website addressed by the <state-farm-claim.com> domain name. Further, Respondent registered and used the disputed domain name with actual or constructive knowledge of the STATE FARM mark and Complainant’s rights in the mark.
B. Respondent
Although,
Respondent failed to submit a formal Response in this proceeding but has
responded to the dispute resolution provider stating that “I don't want that
domain anymore I'm not using it and I will not use it what do you want me to do
you keep sending me emails what am I supposed to do?”
Complainant has trademark rights in the STATE FARM mark.
Respondent registered the at-issue domain name after Complainant acquired rights in STATE FARM.
Respondent, via its email response to the Forum, impliedly consents to having the at-issue domain name transferred to Complainant.
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."
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.
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.”).
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Paragraph 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
Here, since there is a clear indication that Respondent impliedly agrees to transfer the at-issue domain name to Complainant, the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Nat. Arb. Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the STATE FARM mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <state-farm-claim.com> domain name is fashioned by replacing the space in Complainant’s trademark with a hyphen and then adding a hyphen and the suggestive term “claim.” The domain name is completed by appending the top-level domain name “.com” to the resulting “state-farm-claim” string. However, these changes to the STATE FARM mark are insufficient to materially distinguish the at-issue domain name from the mark under the Policy. Therefore, the Panel finds that Respondent’s<state-farm-claim.com> domain name is confusingly similar to Complainant’s STATE FARM trademark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).
In light of the foregoing, Respondent’s implied consent-to-transfer the at-issue domain name to Complainant in response to the Complaint compels the Panel to order that the <state-farm-claim.com> domain name be transferred as requested. The Panel finds no reason to provide further analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has effectively consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <state-farm-claim.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 3, 2015
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