State Farm Mutual Automobile Insurance Company v. state Farm
Claim Number: FA0703000948230
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Janice
K. Forrest, of State Farm Mutual
Automobile Insurance Company,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarmbanknew.com>, registered with Tucows Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 28, 2007.
On March 28, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <statefarmbanknew.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 March 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 18, 2007 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@statefarmbanknew.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmbanknew.com> domain name is confusingly similar to Complainant’s STATE FARM BANK mark.
2. Respondent does not have any rights or legitimate interests in the <statefarmbanknew.com> domain name.
3. Respondent registered and used the <statefarmbanknew.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, is a nationally known insurance company. Complainant has operated under the STATE FARM mark since 1930 and holds multiple United States Patent and Trademark (“USPTO”) registrations of that mark (e.g. Reg. No. 1,979,585 issued June 11, 1996). Complainant also operates under the STATE FARM BANK mark and holds a USPTO registration for that mark (Reg. No. 2,319,867 issued February 15, 2000). Complainant has registered the <statefarm.com> domain name which it uses to connect with online consumers.
Respondent registered the <statefarmbanknew.com> domain name on January 13, 2007. Currently, the disputed domain name does not resolve to any content and there is no website associated with the domain name. There is no evidence that Respondent is engaged in preparations to use the disptued domain name in connection with a website.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has established rights in the STATE FARM and
STATE FARM BANK marks through registration of the marks with the USPTO. The Panel finds that Complainant has
established rights in the STATE FARM and STATE FARM BANK marks pursuant to
Policy ¶ 4(a)(i).
See Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held
that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive."); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <statefarmbanknew.com> domain name is confusingly similar to Complainant’s STATE FARM and STATE FARM BANK marks. The disputed domain name includes Complainant’s marks in their entirety, which the panel in Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) found to be evidence of a confusingly similar domain name. Specifically, the panel stated that “the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” The disputed domain name does add the term “new” to Complainant’s marks, however this could easily refer to a new product or services offered by Complainant and does not distinguish the disputed domain name from Complainant’s marks. The panel in L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) addressed the issue of adding descriptive terms to the complainant’s mark. Specifically, the panel found that combining the generic word “shop” with the complainant’s registered mark “llbean” did not circumvent the complainant’s rights in the mark nor did it avoid a finding of confusing similarity under the ICANN Policy. Similarly, this Panel finds that the disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the <statefarmbanknew.com> domain name establishes a prima facie case. As the panel in G.D. Searle v. Martin Marketing., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) explained, the creation of a prima facie case shifts the burden to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to avail itself of the opportunity to submit a Response in order to present the Panel with evidence or arguments in support of its rights or legitimate interests is evidence that Respondent lacks both rights and legitimate interests under Policy ¶ 4(a)(ii). The panel in Bank of America Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) reacted to a respondent’s failure to respond by saying that, “Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.” While this Panel agrees with the reasoning of the Bank of America panel, it will nonetheless examine the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c).
Respondent’s <statefarmbanknew.com> domain name currently does not resolve to any content and there is no available evidence of any demonstrable preparations for use. In L.F.P., Inc. v. B and J Properties., FA 109697 (Nat. Arb. Forum May 30, 2002), the panel found that the respondent lacked rights or legitimate interests where there was no evidence of demonstrable preparations for use of the disputed domain name, stating that “a Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.” The panel in Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) came to a similar conclusion finding that no rights or legitimate interests could be found when the respondent failed to use the disputed domain names in any way. This Panel finds that Respondent’s use of the <statefarmbanknew.com> domain name is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
There is no available evidence that Respondent is commonly known by the <statefarmbanknew.com> domain name. While Respondent’s WHOIS information identifies Respondent as “state Farm,” there is no other evidence that Respondent is known by that name either personally or professionally. In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.” Similarly, in Hewlett-Packard Company v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22, 2004), the panel held that because of the prominence of the HP mark, that the respondent’s registration under the ‘HP Supplies’ name did not establish that the respondent was commonly known by the <hpsupplies.com> domain name.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name and lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel is not limited to the
circumstances described in Policy ¶¶ 4(b)(i)-(iv) in
finding evidence of bad faith registration and use. The Panel may take into account other
circumstances including whether there is evidence of any demonstrable
preparations by Respondent to use the disputed domain name. As the panel in Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000), explained, “the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive.” In this case, no available evidence indicates that Respondent is using or
planning to use the <statefarmbanknew.com> domain
name. The disputed domain name currently
resolves to a page with the message “The page cannot be found.” In Clerical
Medical Investment Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000), the panel found that merely holding an infringing domain name
without active use could constitute use in bad faith. The panel in Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) found bad faith where the
respondent made no use of the domain name in question and there were no other
indications that the respondent could have registered and used the domain name
in question for any non-infringing purpose.
This Panel finds that Respondent’s failure to demonstrate preparations
to use the <statefarmbanknew.com> domain name is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarmbanknew.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 2, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum