State Farm Mutual Automobile Insurance Company v. Newnic Corporation
Claim Number: FA0203000105980
Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Janice K. Forrest. Respondent is Newnic Corporation, Boca Raton, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarm.cc>, registered with eNIC.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 22, 2002; the Forum received a hard copy of the Complaint on March 25, 2002.
On March 26, 2002, eNIC confirmed by e-mail to the Forum that the domain name <statefarm.cc> is registered with eNIC and that Respondent is the current registrant of the name. eNIC has verified that Respondent is bound by the eNIC 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 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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 19, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
The disputed domain name <statefarm.cc> is identical to STATE FARM, a registered service mark in which Complainant holds rights. Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant is a nationally known insurance and financial services company that has done business under the STATE FARM mark since 1930. Complainant registered the mark on June 1, 1996 on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,979,585. Complainant also holds several other registered marks in the United States and Canada incorporating STATE FARM, such as STATE FARM BANK, STATE FARM BAYOU CLASSIC, and STATE FARM INSURANCE, among others. Complainant maintains a website at <statefarm.com> in which it provides information related to its insurance and financial services products.
Respondent registered the disputed domain name on August 17, 1998, and has used it to offer the domain name for sale (specifically marketing it to Complainant’s competitors). Respondent, although not naming a specific sales price, suggests that the domain name is worth between $5,000 and $14,999. Respondent also offers for sale other domain names incorporating the marks of various insurance companies on its 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.
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.
Identical to and/or Confusingly Similar
Complainant has established its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i) by registration with the U.S. Patent and Trademark Office and through Complainant’s continuous subsequent use.
The disputed domain name is identical to Complainant’s mark, as it merely omits the space from the mark and adds the country code top level domain (“ccTLD”) “.cc” to the end. Because spaces are impermissible in domain names and the ccTLD is a required element, these are insignificant to the identicality inquiry. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to or Legitimate Interests
Complainant has established its rights to and interests in the STATE FARM mark. Because Respondent has not submitted a Response in this matter, the Panel may presume it holds no such rights or 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 has made no apparent use of the disputed domain name except to offer the domain name and other domain names for sale. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
No evidence in the record suggests that Respondent is known by the disputed domain name pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel as Newnic Corporation. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied; Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered the disputed domain name, which is identical to Complainant’s mark, in order to market it to Complainant or Complainant’s competitors. Although Respondent has not named a specific asking price, it is clear that it seeks an amount far greater than its out-of-pocket expenses related to the registration of the domain name. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name).
Respondent’s website offers for sale, in addition to the disputed domain name, domain names such as <newyorklife.cc>, <progressive.cc>, and <swisslife.cc>, which it suggests are “Great for online Insurance Companies for redirects.” Respondent has, thus, demonstrated a bad faith pattern of trademark infringement through domain name registration, pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
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 should be hereby granted.
Accordingly, it is Ordered that the <statefarm.cc> domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 3, 2002.
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