State Farm Mutual Automobile Insurance Company v. Fred Sotelo d/b/a Toltec
Claim Number: FA0706001008269
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Mark
O'Flaherty, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <statefarmrecruitment.com> and <statefarmopportunity.com>, registered with Abacus America, Inc. d/b/a Names4Ever.
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 June 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 9, 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@statefarmrecruitment.com and postmaster@statefarmopportunity.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmrecruitment.com> and <statefarmopportunity.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmrecruitment.com> and <statefarmopportunity.com> domain names.
3. Respondent registered and used the <statefarmrecruitment.com> and <statefarmopportunity.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a widely recognized provider of insurance and financial services. Complainant has been operating under the name “State Farm” since 1930 and currently holds several registered marks in connection with its product and service offerings, including the STATE FARM mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996). Complainant also maintains the <statefarm.com> domain name as the primary Internet resource concerning the products, services, and consumer information offered by State Farm.
Respondent registered the <statefarmrecruitment.com> and <statefarmopportunity.com> domain names on February 22, 2007. Each of these domain names currently resolves to a blank error webpage, stating the requested page cannot be found and that the page may have been removed, had its name changed, or is temporarily unavailable.
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.
Registration of a mark with a trademark authority is
sufficient to demonstrate the trademark holder’s rights in the mark under
Policy ¶ 4(a)(i).
The Panel finds Complainant has successfully demonstrated rights in the
STATE FARM mark through registration with the USPTO. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
While Respondent’s <statefarmrecruitment.com> and <statefarmopportunity.com> domain names consist of more than just exact replicas of Complainant’s STATE FARM mark, the Panel determines the addition of the common terms “recruitment” and “opportunity” as well as the generic top-level domain “.com” are insufficient to remove the confusing similarity between Complainant’s STATE FARM mark and Respondent’s domain names pursuant to Policy ¶ 4(a)(i). Respondent’s inclusion of generic terms in the domain names alongside Complainant’s registered STATE FARM mark does less to distinguish them from Complainant’s mark than it does to give the false impression of an association, connection, or affiliation with Complainant. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access the complainant’s website, think that an affiliation of some sort exists between the complainant and the respondent, when in fact, no such relationship would exist). Further, because domain name registration requires a top-level domain element, “.com” is irrelevant for purposes of determining confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Based on the foregoing, the Panel concludes Complainant has satisfied Policy ¶ 4(a)(i).
Complainant bears the initial burden of proof in alleging Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has made the requisite prima facie case, the burden shifts to Respondent to demonstrate rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Satisfied Complainant has crossed this initial threshold, the Panel now considers whether Respondent has proffered any evidence demonstrating rights or legitimate interests in the <statefarmrecruitment.com> and <statefarmopportunity.com> domain names.
In light of Respondent’s failure to submit a response rebutting Complainant’s allegations, the Panel may infer Respondent lacks rights and legitimate interests in the disputed domain names. 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel will still consider, however, whether evidence in the record supports a determination that Respondent holds rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The adverse inference created by Respondent’s failure to respond to the Complaint is further reinforced through Respondent’s inactive use of the <statefarmrecruitment.com> and <statefarmopportunity.com> domain names. Each domain name currently resolves to an inactive website. Registration alone without demonstrable preparations to use the domain names in connection with 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) is insufficient to establish rights or legitimate interests in a disputed domain name. 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 Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Moreover, Respondent has offered no evidence and there is no evidence in the record to suggest Respondent is permitted to register domain names incorporating Complainant’s STATE FARM mark through some sort of association, affiliation, or sponsorship relationship with Complainant. Respondent’s WHOIS information also fails to indicate Respondent is commonly known by either the <statefarmrecruitment.com> or <statefarmopportunity.com> domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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). Accordingly, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii).
The Panel concludes, therefore, that Complainant has satisfied Policy ¶ 4(a)(ii).
As stated by the panel in Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000), “[t]he requirement in the ICANN Policy that a complainant
prove that domain names are being used in bad faith does not require that it
prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the
totality of the circumstances even when the registrant has done nothing more
than register the names.” Thus, the
Panel finds that Respondent’s failure to make an active use of the <statefarmrecruitment.com> and <statefarmopportunity.com> domain
names is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO
Further, based on Respondent’s registration of multiple domain names incorporating Complainant’s STATE FARM mark, the Panel finds Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”).
The Panel concludes Complainant has 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 <statefarmrecruitment.com> and <statefarmopportunity.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 17, 2007
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