State Farm Mutual Automobile Insurance Company v. AR Towing
Claim Number: FA1101001366391
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Debra J. Smith of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is AR Towing (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmroadsideassistancesandiego.com>, registered with Tucows, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2011; the National Arbitration Forum received payment on January 7, 2011.
On January 7, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmroadsideassistancesandiego.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 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@statefarmroadside-assistancesandiego.com. Also on January 10, 2011, 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 February 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant owns exclusive rights to use its STATE FARM service mark in connection with the marketing of financial and insurance related services.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its STATE FARM service mark (including Reg. No. 1,979,585, issued June 11, 1996).
On October 18, 2010, Respondent registered the domain name <statefarm-roadsideassistancesandiego.com>.
The disputed domain name redirects Internet users to <homestead.com>, which is unrelated to Complainant.
Respondent’s <statefarmroadsideassistancesandiego.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
Complainant has not authorized Respondent to register the disputed domain name or to use the State Farm service mark for its business purposes.
Respondent is not commonly known by the contested domain name.
Respondent does not have any right to or legitimate interest in the domain name <statefarmroadsideassistancesandiego.com>.
Respondent registered and uses the domain name <statefarmroadside-assistancesandiego.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts that Respondent lacks rights to and legitimate interests in the <statefarmroadsideassistancesandiego.com> domain name. Once a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to show that it nonetheless has rights to or legitimate interests in its contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a prima facie case on the point of Respondent’s rights to and legitimate interests in the contested domain name. Because Respondent has failed to respond to the Complaint filed in this proceeding, we may, without more, conclude that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Notwith-standing this state of the record, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that State Farm has not authorized Respondent to register the domain name or to use the State Farm trademark, and that Respondent is not commonly known by the contested domain name. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “AR Towing,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent has not established that it is commonly known by the contested domain name so as to have that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also note that Complainant alleges, without objection from Respondent, that Respondent uses the <statefarmroadsideassistancesandiego.com> domain name to redirect Internet users to the website <homestead.com>, which is unrelated to Complainant’s business. In the circumstances here presented, we may comfortably presume that Respondent profits from the visits of Internet users to the resolving website, whether by means of the receipt of click-through fees or otherwise. This behavior does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that a respondent did not have rights to or legitimate interests in a domain name where it redirected Internet users to its own website promoting the sale of books unrelated to the business of a complainant); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003):
Respondent's registration and use of the … domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Internet users attempting to reach Complainant at the disputed domain name are redirected to a website which purports to sell products and services which are unrelated to the business of Complainant. Internet users are thus likely to become confused by the deception inherent in this redirection. Respondent likely profits financially from this use of the contested domain name, which evidences bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002):
By use of …[the contested domain name]… to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a complainant to its own website, likely profiting in the process).
Furthermore, it is evident on this record that Respondent had actual notice of Complainant’s rights in the STATE FARM mark when it registered the disputed <statefarmroadsideassistancesandiego.com> domain name. This is a further indication of Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):
[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.
See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual or constructive knowledge of a complainant’s mark, so that that respondent must have registered a competing domain name in bad faith).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <statefarmroadsideassistancesandiego.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 15, 2011
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