State Farm Mutual Automobile Insurance Company v. Brian Orloske
Claim Number: FA0203000105735
Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”). Respondent is Brian Orloske, Woodbury, MN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmloan.com>, registered with Network Solutions.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 4, 2002; the Forum received a hard copy of the Complaint on March 5, 2002.
On March 5, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <statefarmloan.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 March 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
1. Respondent’s use of the STATE FARM mark in <statefarmloan.com> is confusingly similar to Complainant’s family of STATE FARM marks.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as <statefarmloan.com>, and Internet users will be confused as to Respondent’s affiliation with Complainant. Furthermore, Respondent has not demonstrated that it will use the disputed domain name in connection with a bona fide offering of goods and services.
3. Because of the fame attained by Complainant’s distinctive mark, Respondent had constructive knowledge of Complainant’s famous mark when it registered the disputed domain name. Further, any potential use by Respondent would result in customer confusion as to the source or sponsorship of the site. Therefore, Respondent has registered and used <statefarmloan.com> in bad faith.
No Response was submitted.
Complainant has done business under the STATE FARM mark since 1930 and registered the mark with the United States Patent and Trademark Office on June 11, 1996, Registration No. 1,979,585. Complainant also owns several federally registered marks incorporating STATE FARM, including, STATE FARM INSURANCE, registered on September 11, 1979, Registration No. 1,125,010; STATE FARM INSURANCE COMPANIES, registered on May 21, 1957, Registration No. 645,890; and STATE FARM BANK, registered on February 15, 2000, Registration No. 2,319,867. Complainant engages in business in both the insurance and financial services industry. Complainant has spent substantial time, effort and funds to develop good will associated with the STATE FARM family of marks.
Respondent registered <statefarmloan.com> on May 7, 2001 and according to Complainant, the website connected with the domain name in dispute has been “under construction.” Complainant did not grant a license to Respondent to use Complainant’s STATE FARM mark. Complainant has sent four cease and desist requests to Respondent and Respondent has failed to answer all of them. Two of Complainant’s requests were sent via certified mail in which Respondent accepted, while the other two requests by Complainant were via e-mail.
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 the 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.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant has established its rights to the STATE FARM mark through over seventy years of continuous use as well as a federal registration of the mark with the USPTO.
The disputed domain name <statefarmloan.com> is confusingly similar to Complainant’s famous mark. The term “state farm” is the dominating and recognizable portion of the overall domain name, while “loan” is merely a generic term. It has been held that the addition of the generic term to an already famous mark does not diminish the confusing similarity between the mark and the disputed domain name. Therefore, <statefarmloan.com> is confusingly simliar to Complainant’s famous STATE FARM mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Furthermore, since Complainant is involved in finance, and has a registered mark that incorporates the term “bank” it can be inferred that the confusingly similar nature of the disputed domain name and Complainant’s mark is even more apparent. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark “Marriott”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response in this matter. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in <statefarmloan.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Therefore, the Panel may determine that all of the allegations made in the Complaint are true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Based on the evidence provided, it appears that Respondent has not made a use out of the domain name in dispute. Such inactivity is evidence that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services pursuant to policy ¶ 4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
Respondent has not been granted a license to use the disputed domain name. Further, the fame attained by Complainant’s STATE FARM mark leads the Panel to hold that it would be difficult to imagine anyone, other than Complainant, commonly known as <statefarmloan.com>. Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
As the result of over seventy years of use, and substantial financial investment in marketing and promoting its mark, Complainant’s STATE FARM mark has become a famous mark in the United States. Based on this fame, the Panel may infer that Respondent had constructive knowledge of the STATE FARM mark when it registered <statefarmloan.com>. Therefore, Respondent has registered the disputed domain name in bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
According to Complainant, Respondent has not made a use out of <statefarmloan.com> and has failed to respond to numerous cease and desist requests by Complainant. Absent any evidence to the contrary, the Panel finds that such passive use is evidence that Respondent has registered and used the disputed domain name in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
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 the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <statefarmloan.com> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.)
Dated: April 5, 2002
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