State Farm Mutual Automobile Insurance
Company v. BIAD Corp. aka Nina Biad
Claim
Number: FA0412000384787
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is BIAD Corp. aka Nina Biad (“Respondent”), 1241 E.
Captain Oreyfus, Phoenix, AZ 85022.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <allstatefarminsurance.info>, registered
with Sipence, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her 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 electronically on December
16, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 16, 2004.
On
December 27, 2004, Sipence, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <allstatefarminsurance.info> is
registered with Sipence, Inc. and that Respondent is the current registrant of
the name. Sipence, Inc. has verified that Respondent is bound by the Sipence,
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
December 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 18, 2005 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@allstatefarminsurance.info
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 24, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <allstatefarminsurance.info>
domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent does not have any rights or
legitimate interests in the <allstatefarminsurance.info> domain
name.
3. Respondent registered and used the <allstatefarminsurance.info>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, State Farm Mutual Automobile Insurance
Company, does business in both the insurance and financial services
industries. Complainant has operated
under the STATE FARM and STATE FARM INSURANCE marks since 1930. In 1999, Complainant opened a federally
chartered bank known as State Farm Bank.
Complainant holds several registrations in multiple countries and with
the United States Patent and Trademark Office for the STATE FARM mark (Reg. No.
1,979,585 issued June 11, 1996), the STATE FARM INSURANCE mark (Reg. No.
1,125,010 issued September 11, 1979) and other STATE FARM-related marks
(including Reg. No. 2,319,967 issued February 15, 2000; Reg. No. 2,198,246
issued October 20, 1998; and Reg. No. 1,579,406 issued January 23, 1990).
Complainant has spent substantial time, effort and money to develop the
goodwill associated with the STATE FARM mark and to promote and develop its
other marks. Complainant does not allow
unauthorized parties to use its marks for their Internet domain names. Furthermore, Complainant registered the
<statefarm.com> domain name in 1995.
Complainant’s website at this domain name offers detailed information
relating to numerous topics such as Complainant’s insurance and financial
services products, consumer information and information about Complainant’s
independent contractor agents.
Complainant has contributed substantial time, effort and money to
develop this website as the primary souce of Internet information for
Complainant’s products, services and information.
Respondent registered the <allstatefarminsurance.info> domain name on September 28, 2004. As of the filing of the Complaint,
Respondent had made no use of the disputed domain name and the domain name did
not resolve to a 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.
Complainant has
established in this proceeding that it has rights in the STATE FARM INSURANCE
mark through registration with the United States Patent and Trademark Office
and by continuous use of its mark in commerce.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive and that Respondent has the
burden of refuting this assumption.).
The <allstatefarminsurance.info>
domain name registered by Respondent is confusingly similar to Complainant’s
STATE FARM INSURANCE mark because the domain name incorporates Complainant’s
mark in its entirety, adding only the generic or descriptive term “all” and the
generic top-level domain (gTLD) “.info.”
The mere addition of a generic term to Complainant’s registered
trademark is insufficient to distinguish the domain name, and the addition of a
gTLD is irrelevant to determining confusing similarity. Therefore, the Panel finds that the domain
name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). 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
Complainant combined with a generic word or term); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal significance since use of a
gTLD is required of domain name registrants."); 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <allstatefarminsurance.info>
domain name, containing Complainant’s STATE FARM INSURANCE mark in its
entirety. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Furthermore, since Respondent
has failed to respond to the Complaint, the Panel will assume that Respondent
lacks rights and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that 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”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also 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).
Additionally,
since Complainant has made the prima facie showing and Respondent has
not responded, the Panel is entitled to accept all reasonable allegations and
inferences in the Complaint as true. See
Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the Complaint to be
deemed true).
The <allstatefarminsurance.info>
domain name does not resolve to a website, and no evidence in the record
suggests that there has been any use of the domain name since its registration
in September 2004. Furthermore, Respondent
has not presented any evidence of demonstrable preparations to use the domain
name for any purpose. Thus, the Panel
concludes 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) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that Respondent made preparations to use the domain name or one like it
in connection with a bona fide offering of goods and services before notice of
the domain name dispute, the domain name did not resolve to a website, and
Respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has
advanced no basis on which the Panel could conclude that it has a right or
legitimate interest in the domain names, and no use of the domain names has
been established).
Complainant
asserts that Respondent is not commonly known by the <allstatefarminsurance.info>
domain name and that Complainant did not authorize Respondent to register the
domain name. Furthermore, Respondent
has not offered any evidence that would suggest that Respondent has ever been
commonly known by the disputed domain name.
Therefore, the Panel finds that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); 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 rights
in the mark precede Respondent’s registration; (3) Respondent is not commonly
known by the domain name in question).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <allstatefarminsurance.info> domain name, which contains Complainant’s
well-known registered STATE FARM INSURANCE mark in its entirety. Furthermore, Respondent offers no
explanation as to its reasons for registering a domain name that is confusingly
similar to Complainant’s mark. The
Panel finds that these circumstances suggest opportunistic bad faith and that
this is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec.
9, 2000) (finding bad faith registration and use where it is “inconceivable
that the respondent could make any active use of the disputed domain names
without creating a false impression of association with the Complainant”); see
also Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28,
2001) (finding that where a mark is so obviously connected with well-known
products, its very use by someone with no connection to these products can
evidence opportunistic bad faith); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000)
(finding registration in bad faith based where there is no reasonable
possibility, and no evidence from which to infer that the domain name was
selected at random since it entirely incorporated Complainant’s name).
Respondent has
made no use of the <allstatefarminsurance.info> domain name and
the Panel finds that it is difficult to contemplate a use of the domain name
that would not infringe upon Complainant’s rights in the STATE FARM INSURANCE
mark. Therefore, the Panel
determines that this is evidence of bad faith registration and 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(b)(iv) even
though Respondent has not used the domain name because “[i]t 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); see also Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent
failed to use the domain name and (2) it is clear that Respondent registered
the domain name as an opportunistic attempt to gain from the goodwill of
Complainant).
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 relief shall be GRANTED.
Accordingly, it
is Ordered that the <allstatefarminsurance.info> domain name be CANCELLED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
February 7, 2005
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