State Farm Mutual Automobile
Insurance Company v. Don Kaplan
Claim Number: FA0612000877775
PARTIES
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented
by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company, 1 State Farm Plaza,
A-3, Bloomington, IL 61710.
Respondent is Don Kaplan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <newstatefarm.com> and <thenewstatefarm.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On January 1, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <newstatefarm.com>
and <thenewstatefarm.com>
domain names are registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that the Respondent is the
current registrant of the names. 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 January 5, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 25, 2007 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@newstatefarm.com and
postmaster@thenewstatefarm.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has been in business since 1930, and currently does
business in the insurance and financial services industries.
Complainant first began using the trademark STATE FARM in 1930, and
that mark was first registered with the United States Patent and Trademark
Office in 1996.
Complainant has expended substantial time, effort and expense to
develop the good will associated with its STATE FARM
mark.
Respondent registered the disputed domain names on
Respondent is not using, nor has it made any demonstrable preparations
to use, the disputed domain names in connection with a bona fide offering of goods or services.
Respondent is neither affiliated with Complainant nor authorized to use
Complainant’s mark in a domain name or for any business purpose.
The disputed domain names are confusingly similar to Complainant’s
mark.
Respondent is not commonly known by the contested domain names.
Respondent has no rights to or legitimate interests in the same domain
names.
Respondent has registered and is using these domain names in bad faith.
B. Respondent
In its Response to the Complaint herein, Respondent recites, among
other things, that it has determined not to contest the allegations of the
Complaint, and agrees that the Panel may issue a decision transferring the
subject domain names to Complainant.
FINDINGS
Respondent has consented to the transfer to
Complainant of the domain names here in issue without the need for further
proceedings.
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, in the ordinary course,
Complainant must prove each of the following three elements in order 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.
RESPONDENT’S CONSENT TO TRANSFER
In the case before us, however, Respondent
does not oppose, but instead consents, in writing, to the requested transfer from Respondent to
Complainant of all rights in the <newstatefarm.com> and <thenewstatefarm.com> domain names. Nothing more is required to
permit this Panel to order the transfer as requested. See, for example: Sanofi-Aventis v. Day Corp., D2004-1075 (WIPO
The situation in
which a respondent has agreed to transfer a domain name during proceedings has
been raised a number of times…. In these cases the Panel has consistently taken the view that a
situation similar to the situation in the present case is sufficient to deem
that the three tests of paragraph 4(a) of the Uniform Domain Name Dispute
Resolution Policy have been met, and has ordered transfer of the domain name to
the Complainant.
It is not necessary, therefore, for
this Panel to analyze or rule upon the issues raised in the instant Complaint.
DECISION
Respondent having consented to the transfer of rights in the <newstatefarm.com> and <thenewstatefarm.com> domain names from Respondent to Complainant, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain names <newstatefarm.com> and <thenewstatefarm.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated:
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