National Arbitration Forum

 

DECISION

 

State Farm Mutual Automobile Insurance Company v. Global Selling Network, LLC c/o Marvin Miller

Claim Number: FA0807001213541

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Monke, Illinois, USA.  Respondent is Global Selling Network, LLC c/o Marvin Miller (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <statefarmgivesback.info>, <statefarmgivesback.com>, <statefarmgivesback.net> and <statefarmgivesback.org>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

Hon. Sir Ian Barker as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 2, 2008.

 

On July 2, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmgivesback.info>, <statefarmgivesback.com>, <statefarmgivesback.net> and <statefarmgivesback.org> domain names are registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the names.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 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@statefarmgivesback.info, postmaster@statefarmgivesback.com, postmaster@statefarmgivesback.net and postmaster@statefarmgivesback.org by e-mail.

 

A timely Response was received on July 26, 2008 in electronic format only.  It was non-compliant with ICANN Rule 5, because it was not received in hard copy.  However, because the Respondent consented in the Response to the transfer of the disputed domain names, the Panel has accepted the Response despite the deficiency.

 

On August 5, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a nationally-known company in the insurance and financial services industry.  It has done business under the name “State Farm” since 1930.  It owns registered trademarks for “State Farm” and “State Farm Insurance” and for several other trademarks incorporating the words “State Farm.”  It has developed an Internet presence since 1995 with the domain name <statefarm.com>.

 

Complainant gave Respondent no rights to use the words “State Farm” for which it has trademark rights.

 

Respondent registered the disputed domain names on April 30, 2008.  Respondent, in May 2008, offered to sell the disputed domain names to Complainant for more than the costs of registration – i.e. for $500.00 per name.

 

B. Respondent

In the e-mail Response, Respondent offered the unlock codes for the disputed domain names, without admitting any wrongdoing.  Respondent did not seek any reimbursement or compensation.

 

FINDINGS

Respondent has consented to the transfer to Complainant of the disputed domain names by providing the unlock codes or not seeking any compensation or reimbursement.

 

DISCUSSION

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 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)          the 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.

However, where a respondent has admitted that he/she/it does not have an interest in a disputed domain name and has consented to the transfer of the disputed domain name, the Panel may forego the traditional UDRP analysis and order the immediate transfer of the disputed domain name.  See Tex. Med. Ctr. v. Spinder, FA 886496 (Nat. Arb. Forum Feb. 19, 2007) (foregoing the traditional Policy analysis where the respondent stipulated to the transfer of the disputed domain names to the complainant); see also Adams v. Truth About Jos, FA 907564 (Nat. Arb. Forum Mar. 9, 2007) (concluding that when a respondent stipulates to the transfer of the disputed domain name in its response or expresses a willingness to transfer the disputed domain name to the complainant, the Panel can forego an analysis of the Policy and order the immediate transfer of the disputed domain name); see also Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 16, 2007) (“In light of Respondent’s request that the Panel enter an order transferring the disputed domain name to Complainant without findings of fact on the elements set forth in Paragraph 4(a) of the Policy, and the lack of any objection thereto, the Panel declines to set forth or address the Parties’ contentions.”); see also Californian Acad. of Sci. v. Tex. Int’l Prop. Assoc., FA 944494 (Nat. Arb. Forum May 8, 2007); see also 3M Innovative Prop. Co. v. (name redacted), FA 1211165, (Nat. Arb. Forum Aug. 4, 2008).

 

The same approach can be found in WIPO decisions, such as Williams-Sonoma Inc. v. VEZ-Port, D2000-0207 (WIPO May 8, 2000) and Slumberland France v. Acohuri D2000-0195 (WIPO June 14, 2000).

 

DECISION

Because of the Respondent’s acknowledgement and the above authorities, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <statefarmgivesback.info>, <statefarmgivesback.com>, <statefarmgivesback.net> and <statefarmgivesback.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Sir Ian Barker, Panelist
Dated: August 19, 2008

 

 

 

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