State Farm Mutual Automobile Insurance Company v. Andrea Randolph
Claim Number: FA0612000863247
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 <gostatefarm.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 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@gostatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <gostatefarm.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <gostatefarm.com> domain name.
3. Respondent registered and used the <gostatefarm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, is a nationally known insurance and
financial services company. Complainant
has been doing business under its STATE FARM mark since 1930. Complainant holds several registrations with
the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark
(Reg. No. 1,979,585 issued June 11, 1996).
Additionally, Complainant operates a website at the
<statefarm.com> domain name.
Respondent registered the <gostatefarm.com>
domain name on
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.
The Panel finds that Complainant’s registrations with the USPTO sufficiently establish Complainant’s rights in the STATE FARM mark. See Innomed Techs., 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Additionally, Respondent’s <gostatefarm.com> domain name is confusingly similar to
Complainant’s STATE FARM mark as it is comprised of Complainant’s mark in its
entirety with the addition of the common, generic word “go.” This addition is not enough to negate the
confusing similarity between Complainant’s mark and the disputed domain
name. 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); see also Am.
Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant must initially establish that Respondent lacks
rights or legitimate interests with respect to the disputed domain name. However, once Complainant makes a prima
facie case, the burden of proof shifts and Respondent must prove that it
has rights or legitimate interests in the <gostatefarm.com>
domain name. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent’s WHOIS information does not indicate that
Respondent is commonly known by the <gostatefarm.com>
domain name and there is no other evidence in the record to suggest that
Respondent is commonly known by the disputed domain name. Complainant also asserts that Respondent is
not authorized to use Complainant’s STATE FARM mark and that Respondent is not
associated with Complainant in any way.
The Panel thus finds that Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
The evidence on record shows that Respondent has failed to make an active use of the <gostatefarm.com> domain name. There has also been no evidence presented of demonstrable preparations to use the disputed domain name. Accordingly, the Panel finds that Respondent has not used the disputed domain name to make 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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The evidence on record indicates that Respondent has failed
to make an active use of the disputed domain name. Failing to make an active use, or to present
evidence of preparations to make an active use, is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
Furthermore, Complainant asserts that Respondent is an
employee of an independent contractor agent that works with State Farm, and as
such, had actual knowledge of Complainant’s mark when registering the <gostatefarm.com> domain name. The Panel finds that this constitutes further
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See
Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that the respondent demonstrated bad faith where the respondent was
aware of the complainant’s famous mark when registering the domain name as well
as aware of the deception and confusion that would inevitably follow if he used
the domain names); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th Cir. 2002) ("Where an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse.").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gostatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 17, 2007
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