DECISION

 

State Farm Mutual Automobile Insurance Company v. Ilya Kushnirsky

Claim Number: FA0108000098822

 

PARTIES

Complainant is Jamice K. Forrest State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Jamice K. Forrest, of State Farm Mutual Automobile Insurance Company.  Respondent is Ilya Kushnirsky, Wappinger Falls, NY (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <state-farm.ws>, registered with Register.com.

 

PANEL

On September 10, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 9, 2001; the Forum received a hard copy of the Complaint on August 9, 2001.

 

On August 10, 2001, Register.com confirmed by e-mail to the Forum that the domain name <state-farm.ws> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 30, 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@state-farm.ws 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.

 

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 Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Respondent has no right or legitimate interests in the disputed domain name.  The Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the service mark STATE FARM. 

 

Respondent is not commonly known under the domain name, <state-farm.ws>. Respondent has never been known by or performed business under the domain name at issue.

 

Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services

 

Failure to resolve the domain name to legitimate website content indicates that the Respondent has no legitimate reason for having registered the name and demonstrates that it has registered and is using the name in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

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 United States Patent and Trademark Office on June 11, 1996.  State Farm has also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm”:

 

State Farm Insurance; State Farm Insurance Companies; the State Farm Insurance 3 oval 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 Bayou Classic and statefarm.com.

 

On June 13, 2001 a cease and desist letter was sent by Complainant via overnight mail to Respondent.  No response was received.  On June 26, 2001 a cease and desist letter was sent via email.  No response was received.

 

Respondent has owned the domain name since May 2, 2000 and since then and as of this date an actual website has not been established at this address.

 

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

The disputed domain name is confusingly similar to Complainant’s STATE FARM mark.  See Sherwin-Williams Co. et al. v. Lento, DWS2000-0002 (WIPO Feb. 12, 2001) (finding the domain name <sherwin-williams.ws> confusingly similar to Complainant’s mark because “[t]he addition of the phrase ".ws" is non-distinctive because it is a gTLD required for registration of a domain name”). 

 

Also, the addition of the hyphen does not mitigate the confusing similarity between the <state-farm.ws> domain name and Complainant’s mark.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen).

 

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

 

Rights or Legitimate Interests

Respondent has no affiliation or relationship with Complainant and, therefore, has no legitimate reason for using a domain name confusingly similar to Complainant's mark.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

In addition, Respondent has made no use of the domain name to date.  This is further evidence that Respondent has no rights or legitimate interests in the domain name.  See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was confusingly similar to a famous mark).

 

Even if Respondent did begin using the <state-farm.ws> domain name, however, the use could not be legitimate.  First, Respondent does not conduct any bona fide business under the name STATE-FARM.  See Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a domain name confusingly similar to Complainant’s mark because Respondent did not provide any bona fide products in connection with the domain name).

 

Second, because Complainant's STATE FARM mark is fully incorporated into the domain name, it would be reasonable for Internet users to assume that the <state-farm.ws> domain name is operated or sponsored by Complainant, when in fact it is not.  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR); see also The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent's use of domain names confusingly similar to Complainant's mark to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).

 

Third, the use of a domain name that is confusingly similar to a famous mark cannot be a legitimate noncommercial or fair use of the famous mark.  See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).  The only possible use of the domain name <state-farm.ws> would be for diverting traffic from Complainant's authorized site.  This is an impermissible use of Complainant's mark.  See id.

 

Consequently, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) is met by registering a domain name that will, if the Respondent ever puts it in use, ultimately result in consumer confusion.  See Hewlett-Packard Co. v. Wieland, FA 95852 (Nat. Arb. Forum Dec. 6, 2000) (finding bad faith where any future use of the inactive website would result in consumer confusion); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where any future use of the domain name would do nothing but cause confusion with the Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

 

When coupled with the long use and fame of Complainant’s mark, Respondent's passive holding of the domain name can be nothing other than bad faith.  In addition, Respondent’s failure to respond to Complainant's June 13, 2001, letter and subsequent email further demonstrates Respondent's bad faith intent in registration and use of the domain name.  See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) ("The Panel assumes that if the Respondent had a good faith intent in registration and use of the domain name, it would have responded either to the Complainant's letter and/or the Complaint, or actually used the domain name in some good faith manner").

 

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

 

DECISION

Having established that Complainant has made the necessary showing under all three required elements under the ICANN Policy, the Panel concludes that the requested relief should be and it is hereby granted.

 

Accordingly, it is Ordered that the <state-farm.ws> domain name be transferred from Respondent to Complainant.

 

 

James P. Buchele, Panelist

 

Dated September 16, 2001

 

 

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