State Farm Mutual Automobile
Insurance Company v. Yodle c/o Domain Administrator
Claim Number: FA1004001317331
PARTIES
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 NAME
The domain name at issue is <statefarminsuranceny.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 5, 2010.
On April 5, 2010, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <statefarminsuranceny.com> domain
name is registered with Enom, Inc. and
that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 April 6, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 26,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@statefarminsuranceny.com. Also on April 6, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent via post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received and determined to be complete on April 20, 2010.
On April 23, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant State Farm Mutual Automobile Insurance Company contends that:
1. The domain name <statefarminsuranceny.com> which is registered in the
name of Respondent is identical or confusingly similar to Complainant’s
registered trademarks for STATE FARM INSURANCE,
registered in the United States of America, Canada and Mexico in which
Complainant has rights.
2. Respondent does
not have any rights or legitimate interests in the <statefarminsuranceny.com > domain name.
3. Respondent registered
and is using the domain name <statefarminsuranceny.com> in bad faith.
4. The domain name should be transferred from Respondent to Complainant.
B. Respondent
Respondent Yodle c/o Domain Administrator contends that:
1.
Its failure to respond to Complainant’s prior
requests that Respondent transfer the domain name <statefarminsuranceny.com> to Complainant
was inadvertent.
2.
Respondent
had no bad faith intent in connection with the registration or use of the
domain name in dispute.
3.
Respondent agrees to the relief requested by
the Complainant and will, upon order of the Panel, transfer the domain name
registration to Complainant.
4.
This is
not an admission to the three elements of the Policy, but rather an offer of
unilateral consent to transfer. Since
Respondent consents to the transfer of the domain name <statefarminsuranceny.com> to Complainant,
the panel need not reach a determination on the merits of the Complaint.
FINDINGS
1.
Complainant
is the registered proprietor of the trademark STATE FARM INSURANCE, registered
in the
2.
Respondent
registered the domain name <statefarminsuranceny.com> on
January 26, 2010.
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 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;
(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.
However, it is clear from a reading of the
Complaint and Response that this matter is now a request for a consent
order. That is so because, first, Complainant asks for an order that the
domain name be transferred to it for the reasons set out above. Respondent says
that it is only inadvertence that has led to its failure to respond to
Complainant’s requests to transfer the domain name and that it had no bad faith
intent in connection with the registration or use of the domain name. It
therefore also asks for an order that the domain name be transferred to
Complainant. Both parties are therefore asking for the same order.
It is open to the
Panel when faced with a request for a consent order of this nature to forgo the
usual UDRP analysis of the three elements set out above and to make an order
for the transfer of the domain name to Complainant. That was the course
that was followed in Boehringer Ingelheim Int’l GmbH v. modern Ltd-Cayman
Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003), PSC Management Limited
Partnership v. PSC Management Limited Partnership (Nat. Arb. Forum June 6, 2005) and Malev Hungarian Airlines, Ltd. v.
Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) where
it was said:
“In
this case, the parties have both asked for the domain name to be transferred to
the Complainant…Since the requests of the parties in this case are identical,
the panel has no scope to do anything other than to recognize the common
request, and it has no mandate to make findings of fact or of compliance (or
not) with the Policy.”.
The same course was
followed by the panel as presently constituted in Norgren, Inc. v. Norgren,
Inc. c/o Domain Administrator, FA 670051 (Nat. Arb. Forum May 23, 2006), Diners Club International Ltd. v. Nokta
Internet Technologies FA 720824 (Nat. Arb.Forum July 24, 2006) and Digg Inc. v. Damien
Overeem, FA 611000 (Nat. Arb. Forum Dec 20, 2006) and also by the panel in The Body Shop
International plc v. Agri, Lacus, and Caelum LLC, FA 679564 (Nat.
Arb. Forum May 25, 2006). The Panel respectfully adopts the position as
expressed in The Body Shop International plc v. Agri, Lacus, and Caelum
LLC, supra:
“Consistent with a
general legal principle governing arbitrations as well as national court
proceedings, this Panel holds that it cannot issue a decision that would be
either less than requested, or more than requested by the parties.
Because both Complainant and Respondent request the transfer of the disputed
domain name to Complainant, the Panel must recognize the common request of the
two parties.”
Indeed, as has
often been said, it would be unwise to make any other findings in case the same
issues were to arise in later proceedings. Accordingly, the Panel will not make
any findings of fact or compliance or otherwise with respect to the detailed provisions
of the Policy, but will make the only order that is appropriate in the
circumstances, which is an order for the transfer of the domain name to
Complainant.
DECISION
Accordingly, it is
Ordered that the <statefarminsuranceny.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 30, 2010
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