State Farm Mutual Automobile Insurance
Company v. Newnic Corporation
Claim Number: FA0203000105980
PARTIES
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.
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 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 postmaster@statefarm.cc 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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 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.
DECISION
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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