DECISION

 

State Farm Mutual Automobile Insurance Company v. None a/k/a Paul Angel

Claim Number: FA0108000099075

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company.  Respondent is Paul Angel None, Alpharetta, GA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <state-farmins.com>, <state-farminsurance.com>, and <state-farminsurance.net>, all registered with DirectNIC.com.

 

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.

 

Panelist is Judge Karl V. Fink (Retired).

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 15, 2001; the Forum received a hard copy of the Complaint on August 16, 2001.

 

On August 16, 2001, DirectNIC.com confirmed by e-mail to the Forum that the domain names <state-farmins.com>, <state-farminsurance.com>, and <state-farminsurance.net> are registered with DirectNIC.com and that the Respondent is the current registrant of the names.  DirectNIC.com has verified that Respondent is bound by the DirectNIC.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 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 6, 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-farmins.com, postmaster@state-farminsurance.com, and postmaster@state-farminsurance.net by e-mail.

 

A timely response was received and determined to be complete on September 5, 2001.

 

Complainant submitted an additional submission which complied with National Arbitration Forum Supplemental Rule 7 and was considered by the Panel.

 

Respondent’s additional submission was received without the required fee as required by Supplemental Rule 7, and therefore was not considered.

 

On September 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

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 Patent and Trademark Office on June 11, 1996. State Farm has also registered with the Patent and Trademark Office a number of other marks that all include the phrase “State Farm” including the mark State Farm Insurance.

 

For over 70 years State Farm has expended substantial time, effort and funds to develop the good will associated with the name “State Farm” as well as to promote and develop its other trademarks. State Farm does not allow unauthorized parties to use its marks as part of their Internet domain names.

 

State Farm developed its Internet web presence in 1995 using the domain name <statefarm.com>.  At its web site, State Farm offers detailed information relating to a variety of topics that include its insurance and financial services products, consumer information, and information about its independent contractor agents. State Farm has expended substantial time, effort and funds to develop its web site as a primary source of Internet information for the products, services and information provided by State Farm.

 

In July 2001 it was brought to State Farm’s attention that Paul Angel of Alpharetta, Georgia registered its trademarks “State Farm” and “State Farm Insurance” as part of several domain names. Since then and as of this date an actual web site has been developed offering these domain names, along with many others for sale.

On July 3, 2001 a cease and desist letter was sent by in-house counsel via certified mail to Respondent.  The letter was returned marked “refused”. On July 16, 2001 a cease and desist letter was sent via US Mail. No response was received, thus an e-mail cease and desist letter was sent on August 8, 2001. It was returned as the mailbox had been disabled.

 

Because of State Farm’s substantial efforts, the public associates the phrase “State Farm” with the owner of the servicemark “State Farm”. The State Farm marks are distinctive and have acquired secondary meaning. The domain names at issue are confusingly similar to State Farm’s service mark that it has been using since 1930 and to State Farm’s other registered marks.

 

Respondent has no right or legitimate interest in the disputed domain names. The Respondent is not associated with, affiliated with or sponsored by State Farm, the owner of the servicemark “State Farm.”

 

Respondent is not commonly known under the domain names. It is believed that the Respondent has never been known by or performed business under the domain names at issue. The Respondent does not possess independent intellectual property rights in the names. In addition, State Farm does not have a contractual arrangement with Respondent that would allow him to offer services under the State Farm name. 

 

It is clear that the names registered by Respondent are confusingly similar to State Farm’s trademark. Indeed, the names are virtually identical to two of State Farm’s registered marks “State Farm” and State Farm Insurance.”  These domains are clearly intended to attract individuals seeking information on State Farm and creates customer confusion as to the source or sponsorship of the site.

 

Respondent has no legitimate claim in the domain names at issue. In addition, the facts in evidence demonstrate that Respondent has registered and is using the names in bad faith.

 

In accordance with 15 U.S.C. §1125(d) Respondent’s registration of the disputed domain names was in bad faith in that:

a.                   Respondent has never been known by the name “State Farm.” The Respondent has never traded under the name “State Farm.” Respondent has not acquired a trademark or other intellectual property rights in the domain names.

b.                  Respondent is not authorized to sell products or services for or on behalf of State Farm Mutual Automobile Insurance Company, its affiliates or subsidiaries and is not an independent contractor agent of State Farm.

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

 

B. Respondent

Respondent will not allow “unauthorized parties” to use the State Farm “marks” as part of any domain names it owns.

 

Respondent will not be using these domain names to offer any information at all concerning State Farm or any services offered by State Farm.

 

Respondent hopes to sell these names to an authorized State Farm agent to use in compliance with ICANN rules, and any authorized State Farm agent should be able to do so without question.

 

Respondent has not, and will not, create any web site that could possibly be confused as being affiliated with, sponsored by, connected to, or approved by State Farm. He will not create any web site using these domain names.

 

Respondent has not, and will not, offer, or attempt to offer, any products or services under the State Farm name.

 

The domain names are clearly intended to attract individuals seeking information on State Farm. That is why Respondent intends to sell them to a State Farm agent and also why Respondent thought they would be valuable to an agent.

 

Respondent registered the names to sell them to an authorized agent.

 

C. Additional Submissions

Complainant’s Additional Submission

Respondent states in his response that he is offering for sale the domain names in dispute and that further he will sell them to a State Farm agent. Respondent will not be able to do so in that a State Farm agent would need authorization from State Farm to purchase a domain name that includes a  State Farm trademark and such authorization will not be given.

 

Respondent includes in his response the letter sent to Complainant offering to sell the domain names for a sum higher than the registration costs. To seek payment in an amount higher than the registration cost is considered bad faith.

 

FINDINGS

For the reasons set forth below the Panel finds that the domain names in question should be transferred to Complainant.

 

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.

 

Identical and/or Confusingly Similar

The panel finds that the <state-farmins.com>, <state-farminsurance.com>, and <state-farminsurance.net> domain names are confusingly similar to Complainant’s STATE FARM INSURANCE 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).  See also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

 

The use of State Farm’s trademark in a domain name whether or not additional language, characters or hyphens are added to the State Farm name, is confusingly similar to State Farm’s trademark. See State Farm v. Advisory Services, Inc., FA94662 (June 8, 2000); State Farm v. Bulldog, Inc., FA 94427 (Nat. Arb. Forum May 27, 2000); State Farm v. I & B, FA 94719 (Nat. Arb. Forum June 8, 2000); State Farm v. JIT Consulting, FA 94335 (Nat. Arb. Forum Apr. 24, 2000); State Farm v. Life en Theos, FA 94663 (Nat. Arb. Forum June 1, 2000);  State Farm v. J & B, Inc., FA 94804 (Nat. Arb. Forum June 13, 2000); State Farm v. Richard Pierce, FA 94808 (Nat. Arb. Forum June 6, 2000).

 

In addition, the Panel finds Respondent’s domain names are so confusingly similar a reasonable Internet user would assume that the domain names are somehow affiliated with Complainant’s well-established mark.  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 web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the domain names, nor has Respondent used the domain names in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Strojirny v. Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Moreover, Respondent is not Complainant’s licensee, nor is Respondent otherwise authorized to use Complainant’s mark for any purpose.  See State Farm v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

 

Respondent has provided no evidence that there has been any action taken to establish a bona fide website, and therefore has not established any rights or legitimate interests in the domain names.  See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).

 

Respondent’s passive holding is evidence of Respondent’s lack of legitimate rights and interests in the domain names.  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

The Panel finds that Respondent registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names.  Respondent has also admitted the intent to sell the domain names for a profit.  This is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

 

The Panel also finds bad faith use and registration because Respondent has been passively holding the domain names.  See 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).

 

Complainant has proven this element.

 

DECISION

The panel directs that the domain names <state-farmins.com>, <state-farminsurance.com>, and <state-farminsurance.net>  be transferred to Complainant, State Farm Mutual Automobile Insurance Company.

 

 

Judge Karl V. Fink (Retired), Panelist

 

Dated:  October 4, 2001