State Farm Mutual Automobile Insurance Company v. Alicia Davis
Claim Number: FA0810001231218
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra
J. Monke, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <boonvillestatefarm.com>, <chandlerstatefarm.com>, <evansvillestatefarm.com>, <hendersonstatefarm.com>, <newburghstatefarm.com>, <vanderburghcountystatefarm.com> and <warrickcountystatefarm.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2008.
On October 28, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <boonvillestatefarm.com>, <chandlerstatefarm.com>, <evansvillestatefarm.com>, <hendersonstatefarm.com>, <newburghstatefarm.com>, <vanderburghcountystatefarm.com> and <warrickcountystatefarm.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 October 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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@boonvillestatefarm.com, postmaster@chandlerstatefarm.com, postmaster@evansvillestatefarm.com, postmaster@hendersonstatefarm.com, postmaster@newburghstatefarm.com, postmaster@vanderburghcountystatefarm.com and postmaster@warrickcountystatefarm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <boonvillestatefarm.com>, <chandlerstatefarm.com>, <evansvillestatefarm.com>, <hendersonstatefarm.com>, <newburghstatefarm.com>, <vanderburghcountystatefarm.com> and <warrickcountystatefarm.com> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <boonvillestatefarm.com>, <chandlerstatefarm.com>, <evansvillestatefarm.com>, <hendersonstatefarm.com>, <newburghstatefarm.com>, <vanderburghcountystatefarm.com> and <warrickcountystatefarm.com> domain names.
3. Respondent registered and used the <boonvillestatefarm.com>, <chandlerstatefarm.com>, <evansvillestatefarm.com>, <hendersonstatefarm.com>, <newburghstatefarm.com>, <vanderburghcountystatefarm.com> and <warrickcountystatefarm.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 national company that has operated since 1930. Complainant has operated under the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <statefarm.com> domain name in connection with its operations.
Respondent registered the <boonvillestatefarm.com>, <chandlerstatefarm.com>, <evansvillestatefarm.com>, <hendersonstatefarm.com>, <newburghstatefarm.com>, <vanderburghcountystatefarm.com> and <warrickcountystatefarm.com> domain names on June 14, 2008. The disputed domain names all resolve to web pages that state “This site is under construction.”
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 trademark registration for the STATE FARM mark with the USPTO confers upon Complainant sufficient rights in the mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s disputed domain names all incorporate Complainant’s
entire STATE FARM mark, geographical qualifiers such as “
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
The Panel finds that Complainant has met its burden of demonstrating a prima facie case supporting its allegation that Respondent lacks rights and legitimate interests in the disputed domain names. As such, Respondent receives the burden of proving its rights or legitimate interests. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent has failed to respond to the Complaint. Thus, the only potential evidence by which the Panel can scrutinize as to whether Respondent is or was commonly known by the disputed domain names remains the WHOIS registration information. However, the registrant of record is listed as “Alicia Davis.” Moreover, there is no alleged license or permission for Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
The disputed domain names resolve to web pages that
displaying the heading “This site is under construction.” The Panel finds that Respondent has not
created 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). SeeHewlett-Packard
Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under
construction” page, hosted at the disputed domain name, did not support a claim
of right or legitimate interest under Policy ¶ 4(a)(ii)); see also State Fair of
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that Respondent’s inactive holding of the
confusingly similar disputed domain names is sufficient to demonstrate that
Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See TMP Int’l, Inc. v. Baker Enters.,
FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that
Respondent's [inactive] holding of the domain name does not establish rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home
Prods. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where the respondent merely
inactively held the domain name).
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 <boonvillestatefarm.com>, <chandlerstatefarm.com>, <evansvillestatefarm.com>, <hendersonstatefarm.com>, <newburghstatefarm.com>, <vanderburghcountystatefarm.com> and <warrickcountystatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 8, 2008
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