DECISION

 

State Farm Mutual Automobile Insurance Company v. Cess Sims a/k/a Hospitality Solutions Worldwide

Claim Number: FA0306000164309

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Janice K. Forrest. Respondent is Cess Sims a/k/a Hospitality Solutions Worldwide, Dallas, TX (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <statefarmbayouclassic.us>, registered with Go Daddy Software, 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.

 

James A. Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 16, 2003; the Forum received a hard copy of the Complaint on June 17, 2003.

 

On June 16, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <statefarmbayouclassic.us> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 June 26, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 2003 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On July 23, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 Respondent to Complainant.

 

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

 

1.      Respondent’s <statefarmbayouclassic.us> domain name is identical to Complainant’s STATE FARM BAYOU CLASSIC mark.

 

2.      Respondent does not have any rights or legitimate interests in the <statefarmbayouclassic.us> domain name.

 

3.      Respondent registered and used the <statefarmbayouclassic.us> domain name in bad faith.

 

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

 

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, operates in both the insurance and the financial services industry. Complainant first began operating under the STATE FARM mark in 1930 for insurance services, registering the mark on the Principal Register of the U.S. Patent and Trademark Office on June 11, 1996 (U.S. Reg. No. 1,979,585). A little over two years later, Complainant also registered the STATE FARM BAYOU CLASSIC mark on the same Register (U.S. Reg. No. 2,198,246, registered on October 20, 1998). Complainant uses the STATE FARM BAYOU CLASSIC mark to denote the football game that it sponsors between rival teams Southern University and Grambling State University, and is the exclusive title sponsor of this event.

 

Respondent, Cess Sims a/k/a Hospitality Solutions Worldwide, registered the <statefarmbayouclassic.us> domain name on June 5, 2002, and is not licensed or authorized to use Complainant’s STATE FARM BAYOU CLASSIC mark for any purpose. Respondent has posted no original content at the disputed domain name since its registration over a year ago.

 

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) the 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 BAYOU CLASSIC mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread promotional use of the mark in commerce.

 

Respondent’s <statefarmbayouclassic.us> domain name is identical to Complainant’s STATE FARM BAYOU CLASSIC mark. The addition of the country-code “.us” is a required feature of the domain name, and hence does nothing to distinguish the domain name from Complainant’s mark. Likewise, Respondent was forced to eliminate the spaces in the words of Complainant’s mark when it registered its domain name, and this difference is also irrelevant for the purposes of 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” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (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”).

 

Accordingly, the Panel finds that the <statefarmbayouclassic.us> domain name is identical to Complainant’s STATE FARM BAYOU CLASSIC mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Because Respondent has not submitted a response to the Complaint, there is no evidence before the Panel indicating that Respondent is the owner of any trade or service mark identical to the STATE FARM BAYOU CLASSIC mark. Thus, the Panel is unwilling to find that Respondent is able to avail itself of Policy ¶ 4(c)(i). See CDW Computer Centers, Inc. v. The Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name).

 

Respondent has made no actual use of the <statefarmbayouclassic.us> domain name since its registration. Without an explanation of Respondent’s inactivity to rely upon, the Panel chooses to infer that Respondent admits that it lacks rights or legitimate interests in the disputed domain name, and finds that Respondent’s passive holding of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Thus, the provisions of Policy ¶¶ 4(c)(ii) and (iv) are inapplicable to Respondent. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

 

None of the evidence before the Panel would permit the inference that Respondent is “commonly known by” Complainant’s STATE FARM BAYOU CLASSIC mark.  The Panel finds that Respondent is unable to avail itself of Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP Policy ¶ 4(c)(ii) does not apply); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

 

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <statefarmbayouclassic.us> domain name under Policy ¶ 4(a)(ii).

 

Registration in Bad Faith

As stated earlier, Respondent has made no constructive use of the <statefarmbayouclassic.us> domain name, nor offered any indication that it has a non-infringing use planned for the domain name. As there appears to be no reasonabe explanation for Respondent’s registration of the disputed domain name without inferring that it had actual knowledge of Complainant’s rights in the STATE FARM BAYOU CLASSIC mark, the Panel finds that Respondent’s registration of the disputed domain was done in bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘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 is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

 

The Panel thus finds that Respondent registered and used the <statefarmbayouclassic.us> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

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

 

Accordingly, it is Ordered that the <statefarmbayouclassic.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Crary Panelist

Dated: August 6, 2003

 

 

 

 

 

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