DECISION

 

State Farm Mutual Automobile Insurance Company v. Domain For Sale Latonya Thompson a/k/a www.YouEnvyMe.com, Inc. a/k/a Latonya Thompson

Claim Number: FA0502000422197

 

PARTIES

 

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Domain For Sale Latonya Thompson a/k/a www.YouEnvyMe.com, Inc. a/k/a Latonya Thompson, (“Respondent”), 617 The Heights Drive, #C, Fort Worth, TX 76112.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <statesfarm.us> and <statefarms.us>, registered with Schlund + Partner Ag.

 

PANEL

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2005.

 

On February 18, 2005, Schlund + Partner Ag confirmed by e-mail to the National Arbitration Forum that the domain names <statesfarm.us> and <statefarms.us> are registered with Schlund + Partner Ag and that Respondent is the current registrant of the names. Schlund + Partner Ag has verified that Respondent is bound by the Schlund + Partner Ag registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 23, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 15, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

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 March 18, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant makes the following assertions:

 

1.      Respondent’s <statesfarm.us> and <statefarms.us> domain names are confusingly similar to Complainant’s STATE FARM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <statesfarm.us> and <statefarms.us> domain names.

 

3.      Respondent registered or used the <statesfarm.us> and <statefarms.us> domain names in bad faith.

 

B. Respondent failed to submit a response in this proceeding.

 

 

FINDINGS

 

Complainant has provided insurance and financial services under the STATE FARM mark since 1930. For over 70 years, Complainant has expended substantial time, effort, and funds to develop the goodwill associated with the STATE FARM mark. Complainant holds U.S. trademark Reg. No. 1,979,585 for the STATE FARM mark (issued June 11, 1996), which is on the Principal Register of the United States Patent and Trademark Office.

 

Respondent registered the <statesfarm.us> and <statefarms.us> domain names on November 6, 2004 and November 7, 2004, respectively. The domain names resolve to parking pages created by the domain name registrar. Respondent is not licensed or authorized to use Complainant’s mark.

 

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the STATE FARM mark through registration with government authorities and through continuous use of the mark in commerce since 1930. See 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 a respondent has the burden of refuting this assumption); 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.”).

 

Respondent’s <statesfarm.us> and <statefarms.us> domain names are confusingly similar to Complainant’s mark because the domain names simply add the letter “s” and the country-code top-level domain (“ccTLD”) “.us” to the mark and removes a space from the mark. The addition of a single letter and the “.us” ccTLD and the removal of a space fail to distinguish the domain names from the mark. Thus, the Panel finds that the domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” failed to add any distinguishing characteristic to the domain name, the <tropar.us> domain name was identical to the complainant’s TROPAR mark); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (“[T]he addition of an ‘s’ to the end of Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation.”); 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.

 

Rights or Legitimate Interests

 

Complainant is able to establish a prima facie case by showing that Respondent does not qualify for the four “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iv). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. In this case, Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative . . . . [I]t is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted [to the] Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted that a respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

Because Respondent has failed to submit a response in this proceeding, the Panel may accept as true all reasonable allegations submitted by Complainant in the Complaint. Furthermore, since Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain names, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the domain names. In this proceeding, Respondent has not submitted a response. Thus, Respondent has failed to present any circumstances under which it could substantiate rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent had no rights or legitimate interests in the domain name because it never submitted a response or provided the panel with evidence to suggest otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a response the panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

 

Respondent is not using the <statesfarm.us> and <statefarms.us> domain names for any purpose. Respondent’s passive holding of the domain names does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iv). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain names are 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 the respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that a respondent has not established any rights or legitimate interests in the disputed domain name).

 

No evidence in the record indicates that Respondent owns a trademark identical to the disputed domain names. Furthermore, the <statesfarm.us> and <statefarms.us> domain names’ WHOIS information indicates that Respondent is known as “Domain For Sale Latonya Thompson a/k/a www.YouEnvyMe.com, Inc. a/k/a Latonya Thompson” and is not known by either of the second-level domain names that are confusingly similar to Complainant’s STATE FARM mark. Thus, Respondent has failed to demonstrate any rights or legitimate interests in the domain names under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting UDRP ¶ 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.

 

Registration or Use in Bad Faith

 

While each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use or registration of the domain names, 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 domain names that incorporate Complainant’s famous STATE FARM mark in its entirety and merely add a single letter. Moreover, Respondent is not using the disputed domain names for any purpose. Although the domain names were registered less than six months ago, the Panel finds that it is inconceivable that Respondent could make any use of the disputed domain names without creating a false impression of association with Complainant. Such passive holding of domain names that are 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 UDRP ¶ 4(a)(iii) even though the respondent had 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 the respondent made no use of the disputed domain name and there were no other indications that the respondent could have registered and used the domain name for any non-infringing purpose); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark was so obviously connected with the complainant and its products that the use of the domain names by the respondent, who had no connection with the complainant, suggested 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 was “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with Complainant”).

 

Respondent’s registration of the disputed domain names, which are confusingly similar to Complainant’s well-known mark, suggests that Respondent knew of Complainant’s rights in the STATE FARM mark. Additionally, Complainant’s trademark registration on the Principal Register of the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark. Thus, the Panel finds that Respondent chose the <statesfarm.us> and <statefarms.us> domain names based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration or use pursuant to Policy ¶ 4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name and was aware of the deception and confusion that would inevitably follow if it used the domain name); see also 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.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Complainant having established all three elements required under ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <statesfarm.us> and <statefarms.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Louis E. Condon, Panelist

Dated: April 1, 2005