State Farm Mutual Automobile Insurance
Company v. Latonya Thompson
Claim
Number: FA0501000399562
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Latonya Thompson (“Respondent”), 617
The Heights Drive, Fort Worth, TX 76112.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <statesfarm.name>, registered with Schlund+Partner
Ag.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge 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
10, 2005; the National Arbitration Forum received a hard copy of the Complaint January
11, 2005.
On
January 13, 2005, Schlund+Partner Ag confirmed by e-mail to the National
Arbitration Forum that the domain name <statesfarm.name> is
registered with Schlund+Partner Ag and that Respondent is the current
registrant of the name. Schlund+Partner
Ag verified that Respondent is bound by the Schlund+Partner Ag 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 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 14, 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@statesfarm.name 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 17, 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, <statesfarm.name>, is confusingly similar to
Complainant’s STATE FARM mark.
2. Respondent has no rights to or legitimate
interests in the <statesfarm.name> domain name.
3. Respondent registered and used the <statesfarm.name>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
State Farm, established by extrinsic proof in this proceeding that it is a nationally
known company that has been doing business under the STATE FARM mark since
1930. Complainant engages in business
in both the insurance and the financial services industries. Complainant also has established a
nationally recognized presence on televised and other media.
Complainant
developed its Internet web presence in 1995 using the <statefarm.com>
domain name. At its website,
Complainant offers detailed information relating to a variety of topics
including its insurance and financial services products, consumer information,
and information about its independent contractor agents. Complainant has expended substantial time,
effort and funds to develop its website as a primary source of Internet
information for the products, services and information it provides.
Complainant
registered its STATE FARM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,979,585 issued June 11, 1996).
Respondent
registered the <statesfarm.name> domain name December 9,
2004. Respondent’s domain name resolves
to a website for 1&1 Internet, Inc., which purports to be a domain name
registrar and advertises its services on the 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
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 its rights in the STATE FARM mark through registration with the
USPTO and by continuous use of the mark in commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent and
Trademark Office creates a presumption of rights in a mark); see also 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.”).
The domain name
that Respondent registered, <statesfarm.name>, is confusingly
similar to Complainant’s STATE FARM because the domain name incorporates the
mark in its entirety and merely inserts the letter “s” into the mark, adds the
generic top-level domain “.name,” and omits the space between the terms “state”
and “farm” in Complainant’s mark. Such
minor changes are not enough to overcome a finding of confusing similarity
between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, Respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to Complainant’s
marks); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(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”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights to and legitimate interests in the mark contained in its
entirety in the domain name that Respondent registered and alleged that
Respondent has no such rights or interests.
Respondent did not respond to the Complaint. Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Complainant’s
assertion that Respondent has no rights and legitimate interests in the
disputed domain name has not been contested with proof to the contrary. The Panel interprets Respondent’s failure to
respond as evidence that Respondent lacks rights and legitimate interests in
the <statesfarm.name> domain name pursuant to Policy ¶
4(a)(ii). 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <statesfarm.name> domain name, which is confusingly
similar to Complainant’s STATE FARM mark, to operate a website that purports to
be a domain name registrar. Such use is
not a use in connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use,
pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of
information and services under a mark owned by a third party cannot be said to
be the bona fide offering of goods or services”); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website).
Nothing in the
record suggests that Respondent is commonly known by the <statesfarm.name>
domain name and Respondent has not shown that she is authorized to register
domain names featuring Complainant’s STATE FARM mark. The Panel therefore finds that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has
alleged that Respondent acted in bad faith and Respondent did not refute that
assertion. The Panel finds that
Respondent receives click-through fees for diverting Internet users to the
disputed domain name registration website.
Since the domain name Respondent registered features a confusingly
similar version of Complainant’s mark, consumers accessing Respondent’s domain
name are likely to become confused as to Complainant’s affiliation with the
resulting website. Thus, Respondent’s
commercial use of the <statesfarm.name> domain name constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where Respondent attracted users to a website
sponsored by Respondent and created confusion with Complainant’s mark as to the
source, sponsorship, or affiliation of that website); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site).
Furthermore,
Respondent registered the <statesfarm.name> domain name with
actual or constructive knowledge of Complainant’s rights in the STATE FARM mark
due to Complainant’s registration of the mark with the USPTO and the immense
fame that Complainant’s mark has acquired.
Registration of a domain name featuring another’s mark, despite
knowledge of the mark holder’s rights, is tantamount to bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See 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 Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it).
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 <statesfarm.name> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 3, 2005.
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