State Farm
Mutual Automobile Insurance Company v. Cesar Gomez a/k/a cebusiness.com
Claim
Number: FA0302000145206
Complainant is
State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”)
represented by Janice K. Forrest, of State Farm Mutual Automobile
Insurance Company. Respondent is Cesar Gomez a/k/a cebusiness.com,
Las Vegas, NV (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefarmreps.com>, registered with Gkg.Net,
Inc.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 7, 2003; the Forum received a hard copy of the
Complaint on February 7, 2003.
On
February 10, 2003, Gkg.Net, Inc. confirmed by e-mail to the Forum that the
domain name <statefarmreps.com> is registered with Gkg.Net, Inc.
and that Respondent is the current registrant of the name. Gkg.Net, Inc. has
verified that Respondent is bound by the Gkg.Net, 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
February 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 11, 2003 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@statefarmreps.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
March 18, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary 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 assertions:
1. Respondent’s <statefarmreps.com>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarmreps.com> domain name.
3. Respondent registered and used the <statefarmreps.com>
domain name in bad faith.
B. Respondent failed to submit a Response in this
proceeding.
Complainant,
State Farm Mutual Automobile Insurance Company, first began using its STATE
FARM mark as early as 1930. On June 11, 1996, Complainant registered its STATE
FARM mark on the Principal Register of the U.S. Patent and Trademark Office
(U.S. Reg. No. 1,979,585). Only authorized agents or representatives of
Complainant are authorized to operate under the STATE FARM mark.
Under the STATE
FARM mark, Complainant operates in both the insurance and the financial
services industry. In 1995, Complainant began using the <statefarm.com>
domain name to provide information about its insurance and financial service
products, as well as its independent contractor agents. By 1999, Complainant
was operating a Federal Chartered Bank known as State Farm Bank. Complainant
has expended substantial time, effort, and funds to develop good will and
consumer recognition of its STATE FARM mark.
Respondent,
Cesar Gomez a/k/a cebusiness.com, registered the <statefarmreps.com>
domain name on June 21, 2002, and is not licensed or authorized to use the
STATE FARM mark for any purpose. Respondent has made no use of the domain name
since its registration.
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.
Complainant has
established rights in the STATE FARM mark through registration on the Principal
Register of the U.S. Patent and Trademark Office.
Respondent’s <statefarmreps.com>
domain name is confusingly similar
to Complainant’s STATE FARM mark. Complainant’s entire STATE FARM mark is
duplicated in Respondent’s domain name, along with the addition of the word
“reps.” This diminutive form of the word “representatives” does not distinguish
the domain name from Complainant’s mark. Only authorized agents or
“representatives” of Complainant are authorized to operate under the STATE FARM
mark, and the addition of this word to Complainant’s mark dispels no confusion
for the purposes of Policy ¶ 4(a)(i). See 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); see also Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
Accordingly, the
Panel finds that the <statefarmreps.com> domain name is confusingly similar to Complainant’s STATE FARM mark under
Policy ¶ 4(a)(i).
In this dispute, the Panel chooses to view Respondent’s failure to
respond as evidence that it has no rights or legitimate interests in the
infringing 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); see also 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).
Complainant has
the initial burden of demonstrating that Respondent has no rights or legitimate
interests in the disputed domain name. Complainant can meet this burden, thus
shifting it to Respondent, by showing that none of the three enumerated
protections for domain name registrants in Policy ¶ 4(c)(i)-(iii) apply to
Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where
Complainant has asserted that Respondent has no 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”).
Respondent
failed to respond to the Complaint in this dispute, and has made no use of the
disputed domain name since its registration. Not using a domain name and
failing to submit evidence of demonstrable preparations to use it is not, by
definition, a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i). The same facts support the conclusion that Respondent is not making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Vestel Elektronik
Sanayi ve Ticaret AS v. 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”); see
also Nike, Inc. v. Crystal Int’l,
D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests
where Respondent made no use of the infringing domain names).
Considering the fame surrounding
Complainant’s STATE FARM mark in the United States (where Respondent is
domiciled) and the fact that Respondent appears to be known only as
“cebusiness.com” and “Cesar Gomez,” the Panel concludes that Respondent is not
“commonly known by” the name STATE FARM REPS or <statefarmreps.com>. Thus, Policy ¶ 4(c)(ii) does not apply
to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail"); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name
containing Complainant's distinct and famous NIKE trademark).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<statefarmreps.com> domain
name under Policy ¶ 4(a)(ii).
In determining
whether Respondent registered and used the disputed domain name in bad faith,
the Panel may look to the provisions of Policy ¶ 4(b) for guidance. However,
that list is merely meant to be illustrative, and is not an all-inclusive list
of circumstances evidencing bad faith. See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b)
sets forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith evidence).
Respondent, domiciled in the United States, registered an infringing
domain name that entirely incorporates Complainant’s federally registered STATE
FARM mark. Respondent’s addition of the word “reps” to Complainant’s mark in
its <statefarmreps.com>
domain name, implying some affiliation with Complainant or authorization
to operate under its mark, leads the Panel to infer that Respondent was aware
of Complainant’s rights in the mark before registering the domain name. This
actual knowledge of Complainant’s rights in the STATE FARM mark, coupled with
the constructive notice provided to Respondent via Complainant’s registration
of its mark on the Principal Register of the U.S. Patent and Trademark Office,
leads the Panel to conclude that Respondent registered the disputed domain name
in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v.
Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at the time of
registration); see also Victoria’s Cyber Secret
Ltd. P’ship v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072).
Respondent also used the disputed domain name in bad faith. The
infringing nature of Respondent’s <statefarmreps.com>
domain
name dictates that any use of the domain name by a party other than Complainant
would run the risk of confusing Internet users. Here, Respondent has not used
the domain name for eight months, and has not demonstrated to the Panel any
plan to make a good faith use of the domain name. Therefore, the Panel holds
that Respondent’s passive holding of the domain name evidences bad faith use
pursuant to Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29,
2000) (finding bad faith under Policy ¶ 4(a)(iii) even though Respondent has
not used the domain name because “It makes no sense whatever to wait until it
actually ‘uses’ the name, when inevitably, when there is such use, it will
create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
Respondent made no use of the domain name in question and there are no other
indications that Respondent could have registered and used the domain name in
question for any non-infringing purpose).
The Panel thus
finds that Respondent registered and used the <statefarmreps.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <statefarmreps.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
April 3, 2003
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