State Farm Mutual Automobile Insurance
Company v. Darrin Bagnuolo
Claim
Number: FA0501000399349
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL, 91710.
Respondent is Darrin Bagnuolo (“Respondent”), 1801 East Tropicana Avenue,
Suite 10-133, Las Vegas, NV 89120.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <state-farm-insurance-quotes.com>,
registered with Enom, Inc.
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 electronically January
7, 2005; the National Arbitration Forum received a hard copy of the Complaint January
10, 2005.
On
January 7, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <state-farm-insurance-quotes.com> is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 31, 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@state-farm-insurance-quotes.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 7, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <state-farm-insurance-quotes.com>, is confusingly
similar to Complainant’s STATE FARM INSURANCE mark.
2. Respondent has no rights to or legitimate
interests in the <state‑farm-insurance-quotes.com> domain
name.
3. Respondent registered and used the <state-farm-insurance-quotes.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant has
provided insurance and related services under the STATE FARM INSURANCE mark
since 1930. Complainant owns several trademark registrations for the STATE FARM
INSURANCE mark, including U.S. Reg. No. 1,125,010 (issued September 11, 1979),
which is on file at the United States Patent and Trademark Office. For over 70
years, Complainant has expended substantial time, effort, and money to promote
and advertise the STATE FARM INSURANCE mark in connection with its services.
The word “quotes” is descriptive of the insurance services that Complainant
provides. Complainant has also operated a website at the <statefarm.com>
domain name since 1995.
Respondent
registered the <state-farm-insurance-quotes.com> domain name
December 1, 2004. The domain name resolves to a website that claims to be under
development. Respondent is not authorized or licensed to use Complainant’s mark
for any purpose.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
STATE FARM INSURANCE mark through registration with the United States Patent
and Trademark Office and through continuous use of the mark in commerce since
1930. 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. Respondent has the burden of refuting this
assumption).
The <state-farm-insurance-quotes.com>
domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark
because it merely adds several hyphens, the “.com” generic top-level domain,
and the generic word “quotes,” which is shorthand for price quotations on
Complainant’s insurance services, to Complainant’s mark. The addition of a
generic top-level domain, hyphens, and the generic word “quotes” do not
distinguish the disputed domain name from Complainant’s mark. See 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) ; see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of
Complainant’s mark is identical to and confusingly similar to Complainant’s
mark); see also 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 Am. Online Inc. v. Neticq.com
Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the
generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com>
domain name confusingly similar to Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has legal and common law rights in the STATE FARM INSURANCE
mark. Respondent has failed to submit a response in this proceeding. Therefore,
Complainant’s submission has gone unopposed and its arguments unrefuted. In the
absence of a response, the Panel accepts as true all reasonable allegations
contained in the Complaint unless clearly contradicted by the evidence. Because
Respondent has failed to submit a response, it has failed to propose any set of
circumstances that could substantiate its rights or legitimate interests in the
<state-farm-insurance-quotes.com> domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
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).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and Respondent is not making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii) because Respondent has made no use of the disputed domain name except
to display a page indicating that it is “planned for development.” In these
circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See
Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov.
11, 2000) (“[M]erely 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 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).
No
evidence before the Panel suggests that Respondent is commonly known by the
<state-farm-insurance-quotes.com> domain name under Policy ¶
4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the
disputed domain name is known as “Darrin
Bagnuolo” and is not known by the confusing second-level domain that
infringes on Complainant’s STATE FARM INSURANCE mark. Moreover, Respondent is
not authorized or licensed to use Complainant’s mark for any purpose. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also 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”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
While
each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences
bad faith use and registration of the <state-farm-insurance-quotes.com>
domain name, additional factors can also be used to support findings of bad
faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent
registered a domain name that incorporates Complainant’s famous STATE FARM
INSURANCE mark in its entirety and merely adds a generic term for an insurance
price quotation. Moreover, Respondent is not using the <state‑farm-insurance-quotes.com>
domain name for any purpose. Although the domain name was registered less than
three months ago, the Panel finds that it is inconceivable that Respondent
could make any use of the disputed domain name without creating a false
impression of association with Complainant. Such passive holding of a domain
name that is confusingly similar to a famous mark equates to bad faith use and registration
under 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 “[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 Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ
mark is so obviously connected with Complainant and its products that the use
of the domain names by Respondent, who has no connection with Complainant,
suggests opportunistic bad faith); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that
Respondent could make any active use of the disputed domain names without
creating a false impression of association with Complainant”).
Furthermore,
Respondent’s registration of the disputed domain name, which incorporates
Complainant’s well-known STATE FARM INSURANCE mark while adding the generic
word “quotes,” suggests that Respondent knew of Complainant’s rights in the
STATE FARM INSURANCE mark. Additionally, Complainant’s trademark registrations
on file at the United States Patent and Trademark Office gave Respondent
constructive notice of Complainant’s rights in the mark. Therefore, the Panel
finds that Respondent chose the disputed domain name based on the distinctive
and well-known qualities of Complainant’s mark, which evidences bad faith
registration and use 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 Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Exxon Mobil
Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent
had actual and constructive knowledge of Complainant’s EXXON mark given the
worldwide prominence of the mark and thus Respondent registered the domain name
in bad faith).
Accordingly, 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 <state-farm-insurance-quotes.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 21, 2005
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