State Farm Mutual Automobile Insurance
Company v. Benjamin Miller a/k/a Beaudoin-Miller Partnership
Claim Number: FA0203000105940
PARTIES
Complainant
is State Farm Mutual Automobile
Insurance Company, Bloomington, IL (“Complainant”). Respondent is Benjamin Miller Beaudoin-Miller Partnership, Denton, TX
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwstatefarm.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 19, 2002; the Forum received a hard copy of the
Complaint on March 21, 2002.
On
March 20, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <wwstatefarm.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
March 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 10,
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 postmaster@wwstatefarm.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 18, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
Respondent’s
<wwstatefarm.com> is confusingly similar to Complainant’s STATE
FARM registered mark. Respondent does
not have rights or legitimate interests in the disputed domain name. Respondent registered and used the disputed
domain name in bad faith.
B.
Respondent did not file a Response in this proceeding.
FINDINGS
Complainant registered STATE FARM with
the United States Patent & Trademark Office (USPTO) on June 11, 1996, Reg.
No. 1,979,585. It has registered ten
(10) additional marks incorporating STATE FARM with the USPTO. Complainant has similar registrations in
Canada, Mexico and the European Community.
Respondent registered the disputed domain
name on September 7, 2001. The disputed
domain name is redirected to <cmsweb.cc>, the site of Comprehensive
Misspelling Solutions.
Complainant sent a cease and desist
letter to Respondent on September 26, 2001 and November 7, 2001. Respondent accepted both letters but did not
answer. Finally, Complainant sent a
cease and desist email to Respondent on December 7, 2001 to which Respondent
never replied.
DISCUSSION
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 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 has rights to the STATE FARM
name and mark due to its federal registration.
Respondent’s <wwstatefarm.com> is
confusingly similar to Complainant’s STATE FARM registered mark because it
includes the mark in its entirety, merely adding “.com” and the common typo
“ww.” See Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such generic typos do not change the Respondent’s
infringement on a core trademark held by Complainant); see also Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights to or Legitimate Interests
Because Respondent has failed to reply to
this Complaint, Respondent is presumed to have no rights or legitimate
interests in the disputed domain name. 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).
Respondent’s use of Complainant’s famous
and distinctive STATE FARM name to divert customer’s to its own website link is
not a bona fide offering of goods under Policy ¶ 4(c)(i). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum
Nov. 7, 2000) (inferring that Respondent registered the domain name
<householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK
mark, with hopes of attracting Complainant’s customers and thus finding no
rights or legitimate interests).
No evidence suggests that Respondent,
known as Benjamin Miller a/k/a Beaudoin-Miller Partnership, is commonly known
by <wwstatefarm.com> and pursuant to Policy
¶ 4(c)(ii) Respondent does not acquire rights by virtue of being known by
Complainant’s mark. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark). Moreover, because Complainant’s mark is well
known, the Panel presumes that Respondent is not commonly known by a domain
name incorporating Complainant’s famous STATE FARM mark. See 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); see also Nokia Corp. v. Private, D2000-1271 (WIPO
Nov. 3, 2000) (finding that Respondent is not commonly known by the mark
contained in the domain name where Complainant has not permitted Respondent to
use the NOKIA mark and no other facts or elements can justify prior rights or a
legitimate connection to the names “Nokia” and/or “wwwNokia”).
Because the disputed domain name is a
mere misspelling of Complainant’s mark, Respondent has made no legitimate or
fair use of the domain name under Policy
¶ 4(c)(iii). See Encyclopaedia Brittanica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s registration of a disputed
domain name that incorporates Complainant’s STATE FARM mark indicates that
Respondent registered the mark in order to trade on the goodwill associated
with Complainant’s mark, and consequently to divert users to Respondent’s own
site. This activity constitutes bad
faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain).
Complainant’s mark is well known and
Respondent has offered no good faith explanation for registering a domain name that
contains Complainant’s mark in its entirety. Further, in such circumstances,
Respondent’s registration and use of the disputed domain name is considered bad
faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding bad faith when (1) the domain name contains the Complainant’s mark in
its entirety, (2) the mark is a coined word, well-known and in use prior to
Respondent’s registration of the domain name, and (3) Respondent fails to
allege any good faith basis for use of the domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted. Accordingly,
it is Ordered that the domain name <wwstatefarm.com
>, be transferred from Respondent to Complainant.
Hon.
Carolyn Marks Johnson, Panelist
Dated: May 2, 2002.
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