State Farm Mutual Automobile Insurance
Company v. Periasami Malain
Claim Number: FA0605000705262
PARTIES
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Periasami Malain (“Respondent”), 1830 Columbia Pike, Arlington, VA 22204.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmlimo.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 12, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 15, 2006.
On May 15, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed
by e-mail to the National Arbitration Forum that the <statefarmlimo.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide
and that the Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names
Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a
Internet Names Worldwide 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 May 16, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 5, 2006 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@statefarmlimo.com by e-mail.
A timely Response was received and determined to be complete on June 5,
2006.
On June 7, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
State Farm is a nationally known company that has been doing business
under the name “State Farm” since 1930.
In 1999 State Farm opened a Federally Chartered Bank known as State Farm
Bank. State Farm engages in business in
both the insurance and the financial services industry. State Farm also has established a nationally
recognized presence on televised and other media.
State Farm first began using the “State Farm” trademark in 1930 and
registered it with the Patent and Trademark Office on June 11, 1996 and
registered “State Farm Insurance” on September 11, 1979. State Farm has also registered with the
Patent and Trademark Office the following marks that all include the phrase
“State Farm.” State Farm Insurance
Companies; the State Farm Insurance 3 0val logo; State Farm Bank; State Farm
Federal Savings Bank logo; State Farm Fire and Casualty Co. logo; State Farm Benefit Management Account; State Farm Bayou Classic logo; State Farm Catastrophe Services; State Farm Mutual Funds and
<statefarm.com>.
For over 70 years State Farm has expended substantial time, effort and
funds to develop the good will associated with the name “State Farm” as well as
to promote and develop its other trademarks.
State Farm does not allow unauthorized parties to use its marks as part
of their Internet domain names.
In February of 2006 it was brought to State Farm’s attention that
Periasami Malain of Arlington, Virginia, registered Complainant’s trademark
“State Farm” as part of the domain name, <statefarmlimo.com>. The domain name sends a person to a web
page under construction and provides search results related to <statefarmlimo.com>. When
a person clicks on the link for State Farm, or for insurance, they are
redirected to another page with sponsored search results, including a link to
State Farm’s home page.
On March 8, 2006 a cease and desist letter
was sent by Complainant’s Intellectual Property Administrator via email to
Respondent at the address of <mpmalain@verizon.net>. On March 20, 2006 Respondent sent an email
in response and stated he will withdraw the domain name registration or
transfer the ownership. On March 28,
2006 an email was sent by Complainant in follow-up to transfer, however, no
response has been received from Respondent.
On April 27, 2006, a cease and desist email was sent, along with a draft
arbitration complaint.
B. Respondent
The Response reads as follows:
“There is no need to continue with this compliance review or the need to
have administrative proceedings on this issue…Upon notification from State Farm
insurance that they had a problem with my domain name, I immediately started
the process to cancel my ownership of this name through yahoo…I notified State
Farm Insurance of my intent to cancel this domain name…On May 15, 2006, via
email, I notified State Farm Insurance that I had received confirmation of the
cancellation of this domain name from Yahoo…Again, I am no longer the owner of
this domain name or have any interest in the disputed domain name. Hopefully, there is no need to proceed with
this complaint or any administrative proceedings.”
FINDINGS
1.
Complainant is
a well-known company that has done business under the trademark, STATE FARM,
for many years. Complainant holds
trademark registrations for STATE FARM.
2.
Respondent is
an individual who registered <statefarmlimo.com> in the year 2006,
but who, upon learning that Complainant objected to the use of its trademark in
the domain name, has made efforts to cancel the domain name. Respondent states that he is no longer the
owner of the domain name and professes no interest in the domain name.
3.
The domain
name, <statefarmlimo.com> is confusingly similar to Complainant’s
trademark, STATE FARM.
4.
No further
findings are warranted under the facts and circumstances of this case, and the
domain name should be transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(2)
the 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.
It is clear that the domain name <statefarmlimo.com>
is confusingly similar to Complainant’s trademark, STATE FARM. Complainant’s
registrations with the United States Patent and Trademark Office of the
trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant
to Policy ¶4(a)(i). See Microsoft
Corp. v. Burkes, FA652743 (Nat. Arb. Forum Apr. 17, 2006 holding that
Microsoft had established rights in the Microsoft mark through registration of
the mark with the USPTO.
The <statefarmlimo.com> domain
name is confusingly similar to its registered STATE FARM mark, because it fully
incorporates the mark and merely adds the term ”limo.” The mere addition of a common term to the
STATE FARM mark does not sufficiently differentiate the domain name from the mark
and thus renders the disputed domain name confusingly similar to Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov 22, 2000) holding that
respondent does not by adding the common descriptive or generic terms “corp”,
“corporation” and “2000” following “PGE”, create new or different marks in
which it has rights or legitimate interests, nor does it alter the underlying
mark held by complainant. See also
Perfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000)
holding that by adding the descriptive words “fashion” or “cosmetics” after the
trademark creates a domain name confusingly similar to the trademark in
question.
This confusing similarity justifies the Panel
to properly consider the transfer of the disputed domain name to Complainant as
opposed to cancellation of the domain name.
Respondent states that he has no past,
present or future interest in the disputed domain name. Respondent fails to file a Response that
denies any allegation of the Complaint.
It is clear that Respondent has no objection to divesting himself of the
disputed domain name based upon Complainant’s objection to the use of its
trademark in the disputed domain name.
It follows that Respondent has no objections to the transfer of the
disputed domain name to Complainant.
Under similar circumstances, Panels have decided that when it is clear
that a respondent has no objection to a transfer of a domain name to
complainant, its would be useless to make a formal analysis under UDRP
elements. When it is obvious that
Respondent does not oppose transfer, it is proper to order the transfer without
further analysis. See Disney
Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) that
held that where respondent has agreed to comply with Complainant’s request, the
Panel felt it to be expedient and judicial to forego the traditional UDRP
analysis and order the transfer of the domain name. See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd., that
held that where the respondent stipulated that the domain name should be
transferred, it was proper to transfer the domain name without a traditional
URDP analysis. See also Hungarian
Airlines, Ltd. v. Vetical Axis Inc. FA212653 (Nat. Arb. Forum Jan. 13,
2004), in which it was stated by the Panel, “In this case, the parties have
both asked for the domain name to be transferred to the Complainant…Since the
requests of the parties in this case are identical, the Panel has no scope to
do anything other than to recognize the common request, and it has no mandate to
make findings of fact or of compliance (or not) with the Policy.”
The facts and circumstances of this case
illustrate that Respondent had no intention to resist Complainant’s demand that
the disputed domain name be transferred to Complainant. Respondent’s idea that he could comply with
Complainant’s demands by canceling the disputed domain name, to Complainant’s
benefit, amounts to an admission by Respondent that he had no interests in the
domain name and no objection to Complainant obtaining the domain name.
Under these facts and circumstances, no
formal analysis is required and it is proper to transfer the disputed domain
name to Complainant.
DECISION
Having established all necessary elements required under the ICANN
Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmlimo.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 19, 2006
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