State Farm Mutual Automobile Insurance
Company v. Biz
Claim Number: FA0610000824188
PARTIES
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company, One State Farm Plaza, A-3, Bloomington, IL 61710. Respondent is Biz (“Respondent”), PO Box 18012, Missoula, MT 59808.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <statefarmtrips.com> and <statefarmzone.com>, registered with Tucows Inc.
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.
R. Glen Ayers, Jr. was appointed as Panelist on November 22, 2006.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on October 19, 2006; the National
Arbitration Forum received a hard copy of the Complaint on October 20, 2006.
On October 25, 2006, Tucows Inc. confirmed by
e-mail to the National Arbitration Forum that the <statefarmtrips.com>
and <statefarmzone.com>
domain names are registered with Tucows Inc. and that the Respondent is the
current registrant of the names. Tucows
Inc. has verified that Respondent is bound by the Tucows 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 October 30, 2006, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of November 20, 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@statefarmtrips.com and postmaster@statefarmzone.com by e-mail.
A timely Response was received and determined
to be complete on November 16, 2006.
A timely Additional Submission from
Complainant was received and determined to be complete on November 20, 2006.
On November 22, 2006,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr.
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, State Farm Mutual Automobile Insurance Company, asserts that it holds a famous mark in use since 1930 and various STATE FARM marks have been registered with the USPTO for over 30 years. STATE FARM and STATE FARM INSURANCE are both registered marks, along with other “State Farm” variants.
Obviously, Respondent’s <statefarmtrips.com> and <statefarmzone.com> domain names are at least confusingly similar to the State Farm marks.
State Farm asserts that it has given no
rights to the name and certainly the name was in widespread use long prior to
the registration to the two domain names in question. State Farm asserts that bad faith is shown merely by registering
such domain names where a famous mark is involved.
State Farm also asserts that it sent cease
and desist letters and never received responses.
B. Respondent
The Response is very brief. The Respondent, who is from Montana, states that the disputed domain names were registered by his partner, an Egyptian, Mohsen Saad, who, allegedly, has never heard of a company named “State Farm.” Respondent asserts that Saad was interested in establishing some sort of tourist service to visit the old Soviet Union-style collective farms operated in the former Soviet Union.
Respondent also states that Saad’s religious
beliefs make insurance a sin and that Saad would have nothing to do with an
insurance company or name.
Respondent argues that there are billions of
people in the world who have never heard of State Farm Insurance.
Respondent denies any bad faith and states
that the websites were simply created to promote possible tourism. Respondent goes on to say that, after being
contacted by State Farm, he eliminated “any hosting and completely ceased all
work” with the two disputed domain names.
Respondent states that there has never been any public usage and that
the domain registrations will not be renewed.
FINDINGS
Respondent acted quickly when it learned of the existence of the disputed domain names by receipt of the cease and desist letter. Respondent has stated that he has, in effect, ceased use of the names.
Certainly, State Farm has demonstrated
ownership of the mark by registration. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002).
State Farm has been successful in defending its trademarks against
persons like Respondent and cites a number of cases including State Farm
Mut. Auto Ins. Co. v. Advisory Services, Inc., FA94662 (Nat. Arb. Forum
June 8, 2000). That case and each of
the cases cited therein have found that the addition of descriptive words to
the STATE FARM mark does not make the domain name less “misleading.” See Arthur Guinness Son & Co.
(Dublin), Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23 2001) (applying
Policy ¶ 4(a)(1)).
Respondent certainly has no rights in the
name and admits that he has never made use of the disputed domain names for any
content legitimate or otherwise.
Respondent makes no attempt to rebut Complainant’s prima facie
case. An unrebutted prima facie
case on either “rights” or “bad faith” justified a finding for
Complainant. See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Complainant asserts that ignoring the cease
and desist letters constitutes bad faith.
This Panelist is not sure that failure to response to a demand letter or
cease and desist letter is bad faith.
However, Complainant also correctly states that registration of the two
domain names in the face of the famous nature of the mark and the fact that the
mark is supported by a domain name in use for the last ten years,
<statefarm.com> are significant indicators of bad faith.
Other indicators of bad faith include failure
to use or even make preparations for use of the names, [See DCI S.A. v. Link Commercial
Corp., D200-1232 (WIPO Dec. 7, 2000)], and passively holding the
names [See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30,
2000)].
Further, the Response is basically an
admission that Respondent has ceased and desisted using the disputed domain
names. Respondent also states that he
has no intent to pursue use of the names, and does not intend to reregister the
names.
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.
The Panelist finds that the mark and names
are confusingly similar.
The Panelist finds that Respondent
has no rights in the name.
The Panelist finds that there is sufficient unrebutted evidence of bad faith to support a finding of bad faith on the part of Respondent. Respondent’s Response, which is actually a consent to cease and desist, also supports a finding on all three elements and justifies the relief granted below.
DECISION
Having established all three elements required
under the ICANN Policy, the Panelist concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmtrips.com>
and <statefarmzone.com> domain names be TRANSFERRED.
R.
Glen Ayers, Jr., Panelist
Dated: December 6, 2006
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