State Farm Mutual Automobile Insurance Company v. COMPRARALGO c/o Raj Murjani
Claim Number: FA1005001326350
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 <statefarmjunkcars.com>, registered with GoDaddy.com, Inc.
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 May 25, 2010.
On May 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmjunkcars.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@statefarmjunkcars.com. Also on May 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of a Written Notice, as defined in Rule 1. 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 <statefarmjunkcars.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmjunkcars.com> domain name.
3. Respondent registered and used the <statefarmjunkcars.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, registered the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996) and uses the mark in connection with underwriting and servicing auto, homeowners, life and fire insurance. Complainant also holds trademark registrations for numerous marks that include the STATE FARM mark dating back to 1957 (e.g. Reg. No. 645,860 issued May 21, 1957).
Respondent, COMPRARALGO c/o Raj Murjani, registered the <statefarmjunkcars.com> domain name on April 1, 2010. The disputed domain name does not resolve to an active website.
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 asserts it has rights in the STATE FARM mark due to its trademark registration with the USPTO (Reg. No. 1,979,585 issued June 11, 1996) and its continuous use of the mark in commerce since 1957. Complainant provides additional support for its assertion of rights in the STATE FARM mark through its trademark registration of numerous marks that include the STATE FARM mark dating back to 1957 (e.g. Reg. No. 645,860 issued May 21, 1957). The Panel finds that federal trademark registration satisfies the requirements such that Complainant has established rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <statefarmjunkcars.com> domain name
is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name removes the space
between terms of the mark, adds generic terms (“junk” and “cars”), and adds a
generic top-level domain (“gTLD”) (“.com”) to Complainant’s mark but that these
alterations do not render the disputed domain name distinct. See Bond & Co. Jewelers, Inc. v.
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Previous panels have held that an allegation of lack of rights and legitimate interests is sufficient to establish a prima facie case under Policy ¶ 4(a)(ii). The Panel finds that Complainant, in its allegation that Respondent lacks rights and legitimate interests in the disputed domain name, has met its burden. In doing so, the burden shifts to Respondent to prove it holds rights or legitimate interests in the <statefarmjunkcars.com> domain name. The Panel may infer from Respondent’s failure to respond to these proceedings an admission to Complainant’s allegation. However, the Panel will review the elements of Policy ¶ 4(c) to determine if any rights or legitimate interests exist with respect to Respondent. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant asserts that it has not provided Respondent with authorization to use the STATE FARM mark. The WHOIS information for the disputed domain name lists “COMPRARALGO c/o Raj Murjani” as the registrant, and, in so doing, does not provide the Panel with evidence contridictory to Complainant’s allegation under Policy ¶ 4(c)(ii). Therefore, the Panel finds Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii). See Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”); 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).
Complainant contends that Respondent’s disputed domain name does not resolve to an active website. Complainant argues that Respondent’s failure to make an active use of the disputed domain name is evidence that the disputed domain name fails to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and fails to make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The 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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s <statefarmjunkcars.com> domain name does not resolve to an active website. Rather, Complainant contends that the disputed domain name resolves to a page with an error script. The Panel finds Respondent’s failure to make an active use of the <statefarmjunkcars.com> domain name constitutes bad faith registration and use 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 [failure to make an active use] of a domain name permits an inference of registration and use in bad faith); see DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds Complainant has satisfied the elements of 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 <statefarmjunkcars.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 30, 2010
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