STATE FARM/MUTUAL AUTOMOBILE
I & B
This is a DOMAIN NAME dispute pursuant to the Internet Corporation for Assigned Names and Numbers (ICANN) Domain Name Dispute Policy (the Policy). Arbitration was requested in this case and Marilyn W. Carney, Arlington, VA, who has confirmed to the National Arbitration Forum that she has no known conflict of interest, was assigned as Arbitrator. The matter was decided using the written record.
For the reasons explained below, the Arbitrator has reached the conclusion that the domain name should be transferred to the Complainant.
THE DOMAIN NAME
This dispute concerns the domain name state-farm.com. The registrar for this domain name is Network Solutions, Inc.
State Farm Mutual Automobile Insurance Company (hereafter State Farm) filed a complaint with the National Arbitration Forum on April 28, 2000 naming I & B as Respondent. State Farm has requested that the Domain Name state-farm.com be transferred from I & B to State Farm.
No formal response has been forthcoming from the Respondent.
SUMMARY OF EVIDENCE
State Farm has been using the State Farm trademark since 1930. It has registered with the Patent and Trademark Office several State Farm trademarks and service marks, including State Farm Insurance, State Farm Insurance Companies, State Farm Bank, State Farm Federal Savings Bank, et al., together with a logo or logos. It has also registered trademarks and service marks in Canada, Mexico and the European Community.
State Farm is a nationally known company and for seventy years has expended time and effort to develop the good name associated with State Farm. The company is represented by in-house counsel.
It also has had an internet presence since 1995 under the domain name “statefarm.com”.
Respondent filed the domain name state-farm.com for reasons known only to himself. Nevertheless, confusion has arisen because of this disputed domain name, and users of the internet often reach this site in error, as shown in Complainant’s Exhibit 7. I & B is in no way associated with State Farm.
This confusion was exemplified in an article in the Chicago Sun-Times when the article mistakenly directed readers to the state-farm.com site instead of the statefarm.com site. (Complainant’s Exhibit 6).
Complainant alleges that Respondent has no right or legitimate interest in the disputed domain name, is not doing business under that name, is not commonly known by that name and knew it would cause confusion.
Following a request by State Farm for the Respondent to cease and desist using the state-farm.com, name, the Respondent requested payment of $100,000 to transfer this name or, in the alternative, threatened to sell the domain name to third parties.
Respondent has not made a formal response to the complaint. There are, however, copies of two E-mails from Ilya Kushnirsky to the National Arbitration Forum case coordinator, Nicole Grothe. These contain generalized, rambling arguments suggesting that I & B did not register the name in bad faith, that contrary to the letter to State Farm there is no intention of selling the “page”, that the intent is to merge the “page” with other pages and get all the facts out. Mr. Kushnirsky also believes he has been harassed by State Farm, and his only intent is to get “the truth out about a corrupt unregulated insurance company who [sic] cheats its customers”. His E-mail of May 11, 2000 states that he does not consent to the ICANN dispute.
Respondent has made no effort to demonstrate that he has used the domain name in connection with a bona fide offering of goods or services or that he has commonly been known by the domain name. Moreover, he has not demonstrated that he has been making a legitimate noncommercial or fair use of the domain name. Furthermore, he has made no effort to show that it was not his intention to tarnish the State Farm trademarks or service marks.
FINDINGS OF FACT
The undisputed evidence establishes that:
1. Complainant is a corporation, and is the owner and registrant of trademarks and service marks including the words State Farm.
2. Complainant conducts businesses worldwide using the State Farm name. It has spent seventy years cultivating its name under its several businesses and has also spent large sums of money to develop the businesses using this name.
3. It is a famous company and has an easily recognizable name.
4. State Farm has the domain name statefarm.com, and state-farm.com is confusingly similar.
5. Respondent has not used the disputed domain name in a legitimate business or for the offering of services and has attempted to tarnish the State Farm name.
6. Respondent has not shown that it has ever been known by state-farm or any similar name.
7. Complainant has shown that Respondent has
(a) registered a domain name that is identical or confusingly similar to a
trademark or service mark in which the complainant has rights; and
(b) no rights or legitimate interests in respect of the domain name; and
(c) that the name has been registered and is being used in bad faith in violation of
ICANN’s Uniform Domain Name Resolution Policy, Paragraph 4(b)(i)(ii) and (iii).
Complainant has requested that the Domain Name state-farm.com be transferred from Respondent to Complainant.
1. The Domain Name state-farm.com is so close as to be identical or confusingly similar to Complainant’s trademarks and service marks.
2. Complainant has shown that it should be granted exclusive use of the disputed Domain Name as Respondent has no legitimate use of this name either for business or the offering of services.
3. Complainant has shown that Respondent is attempting to mislead customers and to tarnish the State Farm name to the detriment of State Farm.
4. Complainant has shown that Respondent has registered and used the Domain Name in bad faith.
Based on the above findings and conclusions, it is the decision of the Arbitrator that
The Domain Name state-farm.com registered by Respondent shall be transferred to Complainant.
This the 8th day of June, 2000. Marilyn W. Carney, Arbitrators