DECISION

 

State Farm Mutual Automobile Insurance Company v. All Phase Builders

Claim Number: FA0108000099608

 

PARTIES

Complainant is Janice K. Forrest State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company.  Respondent is All Phase Builders, Aventura, FL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <statefarm-claims.com>, registered with Melbourne IT.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2001; the Forum received a hard copy of the Complaint on August 30, 2001.

 

On August 30, 2001, Melbourne IT confirmed by e-mail to the Forum that the domain name <statefarm-claims.com> is registered with Melbourne IT and that Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 August 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2001 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@statefarm-claims.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On October 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has 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 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 name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <statefarm-claims.com> domain name is confusingly similar to Complainant's famous STATE FARM mark.

 

Respondent has no rights or legitimate interests in respect to the <statefarm-claims.com> domain name.

 

Respondent registered and passively held the <statefarm-claims.com> domain name in bad faith.

 

B. Respondent

The Respondent has failed to submit a response

 

FINDINGS

Since 1930, Complainant has used the mark STATE FARM in relation to its insurance services.  Complainant is a nationally known company and it uses the STATE FARM mark in relation to insurance as well as banking, financial services and sporting events.  Complainant has expended substantial time, effort and funds to develop the good will associated with the mark STATE FARM over the past seventy years.

 

Complainant registered the STATE FARM mark on June 11, 1996.  Complainant has also registered fourteen other marks including the phrase STATE FARM in the United States, specifically <statefarm.com>.  The STATE FARM mark is also registered in Canada, Mexico, and the European Community by the Complainant.

 

Respondent registered the <statefarm-claims.com> domain name on April 14, 2001.  Respondent is not commonly known by the STATE FARM mark nor is it licensed to use the mark.  Respondent has not made any use of the disputed domain name since its registration.  Respondent is the owner of another domain name <allstate-claims.com> bearing another famous mark of a company Respondent is not commonly known as nor has it been given permission to use.

 

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(e), 14(a) and 15(a) 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;

(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.

 

Identical and/or Confusingly Similar

Complainant, through its use, substantial efforts, and numerous federal and international registrations has established that it has rights in the STATE FARM mark.  Furthermore, the <statefarm-claims.com> domain name is confusingly similar to Complainant's mark because Respondent has merely added the generic term "claims" to Complainant's identical mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

 

Furthermore, the <statefarm-claims.com> domain name is confusingly similar because the Internet user is likely to believe that the Respondent is affiliated with the Complainant when they try to access Complainant's website.  The word "claims" is a common word associated with insurance, and as a result an Internet user would be led to believe that <statefarm-claims.com> is linked to the Complainant's own domain <statefarm.com>.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

 

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

 

Rights or Legitimate Interests

A Panel has the discretion to find that Respondent has no rights or legitimate interests in the disputed domain name where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

 

There is no evidence, and Respondent does not refute, that Respondent has rights or legitimate interests in respect to the disputed domain name.  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).

 

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

 

Registration and Use in Bad Faith

Respondent's registration and passive holding of the <statefarm-claims.com> domain name supports a finding of bad faith pursuant to Policy ¶4 (a)(iii).  See 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 domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

 

Furthermore, Respondent also owns another domain name that incorporates the mark of another famous company.  Respondent owns <allstate-claims.com> which uses the ALLSTATE mark in the same way as Respondent has used the Complainant's STATE FARM mark establishing a pattern of conduct and evidence of bad faith.  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).

 

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

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain name <statefarm-claims.com> be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: October 11, 2001