State Farm Mutual Automobile Insurance Company v. SaleClub Online c/o Matthew Papadakis
Claim Number: FA0701000882168
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual Automobile Insurance
Company,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info>, registered with RegisterFly.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 2007 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@statefarmauction.info, postmaster@statefarmgroup.info, postmaster@statefarmlocation.info, and postmaster@statefarmtelevision.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info> domain names are confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info> domain names.
3. Respondent registered and used the <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm
Mutual Automobile Insurance Company, engages in business in both the insurance
and financial services industries.
Complainant has used the STATE FARM mark in commerce since 1930. Complainant holds a registered trademark with
the United States Patent and Trademark Office (“USPTO”) for the STATE FARM mark
(Reg. No. 1,979,855 issued June 11, 1996).
Complainant has also registered the domain name <statefarm.com> to
promote its services online.
Respondent, SaleClub Online
c/o Matthew Papadakis, registered the <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>,
and <statefarmtelevision.info> domain names on
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’s registration of its STATE FARM mark with the
USPTO preceded Respondent’s registrations of the disputed domain names. Under the Policy, registration of a mark with
an appropriate governmental authority confers rights in that mark to a
complainant. Thus, the Panel finds that
Complainant has established rights in the STATE FARM mark pursuant to Policy ¶
4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO
Respondent’s <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info> domain names all contain Complainant’s STATE FARM mark and add the generic terms “auction,” “group,” “location,” and “television,” respectively. Complainant’s STATE FARM mark is the dominant element of all of the disputed domain names, and the additions of the respective generic terms do not avoid a finding of confusing similarity. Thus, the Panel concludes that Respondent’s <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info> domain names are all confusingly similar to Complainant’s STATE FARM mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <statefarmauction.info>, <statefarmgroup.info>,
<statefarmlocation.info>, and <statefarmtelevision.info>
domain names. The WHOIS information
identifies Respondent as “SaleClub Online c/o
Matthew Papadakis,” and Complainant has alleged that Respondent is not
authorized to use the STATE FARM mark.
The Panel can find no other evidence in the record suggesting that
Respondent is commonly known by any of the names. Therefore, the Panel concludes that
Respondent is not commonly known by any of the disputed domain names pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
Respondent’s <statefarmauction.info>, <statefarmgroup.info>,
<statefarmlocation.info>, and <statefarmtelevision.info> domain
names all resolve to a website that is blank except for the phrase, “We will be
back soon!” Respondent has not made any
other use of the disputed domain names, and has not shown intent to use the
disputed domain names for any other purpose in the future. Respondent’s lack of use of the disputed
domain names constitutes neither a bona
fide offering either of goods or services under Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that when the respondent declares its intent to develop a website,
“[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of
such preparations to use the domain name, and 2) that such preparations were
undertaken ‘before any notice to [Respondent] of the dispute’”); see also LFP, Inc. v. B & J Props.,
FA 109697 (Nat. Arb. Forum
Respondent’s disputed domain names all resolve to a website that is
blank except for the phrase, “We will be back soon!” Respondent’s failure to actively use the
disputed domain names indicates bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO
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 <statefarmauction.info>, <statefarmgroup.info>, <statefarmlocation.info>, and <statefarmtelevision.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 16, 2007
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