State Farm Mutual Automobile v. State Farm c/o Sam Rains
Claim Number: FA0802001145900
Complainant is State Farm Mutual Automobile (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <statefarmsamrains.com>, registered with Dotster.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 2008 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@statefarmsamrains.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 <statefarmsamrains.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmsamrains.com> domain name.
3. Respondent registered and used the <statefarmsamrains.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile, has conducted
business under the STATE FARM mark since 1930.
Complainant offers a wide variety of goods and services under the mark,
including automobile insurance.
Complainant holds numerous registered trademarks with the United States
Patent and Trademark Office (“USPTO”) for the STATE FARM mark (i.e. Reg. No.
1,979,585 issued
Respondent registered the <statefarmsamrains.com>
domain name on
Complainant employs an insurance agent by the name of Sam Rains. However, Complainant has determined through an internal investigation that Mr. Rains did not register the disputed domain name. Thus, Respondent has provided false WHOIS information.
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.
Complainant alleges rights to the STATE FARM mark based upon its numerous trademark registrations and use in commerce since 1930. Based on this evidence, many previous panels have recognized Complainant’s rights in the mark. See State Farm Mut. Auto. Ins. Co. v. wwWHYyy.com, FA 1063456 (Nat. Arb. Forum Sept. 25, 2007) (finding that “[t]here can be no doubt that STATE FARM is a very famous mark, and Complainant has clearly established rights in the [mark]” pursuant to Policy ¶ 4(a)(i) based upon its numerous federal trademarks and use in commerce since 1930); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel easily recognizes Complainant’s rights in the STATE FARM mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <statefarmsamrains.com> domain name contains Complainant’s STATE FARM mark in its entirety, which constitutes the dominant portion of the disputed domain name. The addition of “Sam Rains” without the space adds to the confusing similarity because Mr. Rains is an insurance agent employed by Complainant. The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant since all domain names require a top-level domain. Therefore, the Panel finds that Respondent’s <statefarmsamrains.com> domain name is confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <statefarmsamrains.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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).
Based upon the evidence in the record, the Panel is relying
on the facts presented in the Complaint.
Respondent had an opportunity to respond and present its own set of
facts or allegations, but did not. The
Panel finds that Complainant’s submissions were comprehensive and convincing. Therefore, considering Respondent’s failure
to respond to the Complaint, and absent any evidence
to the contrary, the Panel accepts the allegations made in the Complaint as
true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO
Complainant alleges that Respondent is not commonly known by
the <statefarmsamrains.com>
domain name, and is not associated with, affiliated with, or sponsored by Complainant,
the owner of the STATE FARM mark.
Furthermore, Complainant did not authorize Respondent to use its mark in
a domain name. While the WHOIS
information lists Respondent as “State Farm c/o Sam Rains,” Complainant has
determined through an internal investigation that its employee, Sam Rains, did
not register the <statefarmsamrains.com>
domain name. Therefore, Respondent has
provided false WHOIS information. That
being said, there is no evidence in the record to determine that Respondent is
commonly known by the disputed
domain name. Accordingly, the Panel
concludes that Respondent lacks rights and legitimate interests in the <statefarmsamrains.com> domain name
pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent has not made any active
use of the <statefarmsamrains.com>
domain name. Respondent’s failure to use
the disputed domain name inherently does not constitute either 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
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has failed to make any active use of the <statefarmsamrains.com> domain name. Therefore, Respondent’s registration and use constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failing to use a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Aside from Respondent’s failure to use the disputed domain
name, the Panel notes that Respondent provided false WHOIS information. This evidence also indicates that
Respondent’s registration and use constitutes bad faith pursuant to Policy ¶
4(a)(iii). See Home Dir., Inc. v. HomeDirector,
D2000-0111, (WIPO
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 <statefarmsamrains.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 1, 2008
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