Generic Top Level Domain Name (gTLD) Decisions

The Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL, USA ("Complainant"). The Respondent is Kyle Northway, Bakersfield, CA, USA ("Respondent").

The domain name at issue is "statefarmnews.com", registered with Network Solutions.

The undersigned panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Circuit Judge (retired) Karl V. Fink is Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 22, 2000; The Forum received a hard copy of the Complaint on August 17, 2000.

On September 5, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "statefarmnews.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2000 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@"statefarmnews.com" by e-mail.

On September 28, 2000, pursuant to Complainant’s request to have the dispute decided by a one member panel, the Forum appointed Circuit Judge (Retired) Karl V. Fink as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

State Farm is a nationally known company that has been doing business under the name "State Farm" since 1930. 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". State Farm has also registered or applied for registration for a number of marks in Canada, the European community and Mexico.

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 service products, consumer information, and information about its independent contractor agents. State Farm has expanded 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.

As part of its Internet site, State Farm publishes news items relating to its business.

There is no need for the Respondent to usurp the trademark rights of State Farm to accomplish its goals of providing news about State Farm.

B. Respondent

Respondent intends to register hundreds of domain names with the naming convention of "companynews.com". He intends to place them under one news operation with ethical and procedural standards.

Respondent will not proceed with implementation of any of the sites until each is legally cleared. Then they will become nonprofit and be held in "public trust".

His intended purpose for the web site, to provide news about State Farm Insurance Company gives respondent rights and legitimate interests in the domain name.

Respondent’s registration is not in bad faith because he has never had any intent to sell the domain name, to prevent the owner from reflecting the mark in a corresponding domain name or to compete with State Farm.

State Farm is a nationally known company that has been doing business under the name "State Farm" since 1930. 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 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 service products, consumer information, and information about its independent contractor agents. State Farm has expanded 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.

There is no need for the Respondent to usurp the trademark rights of State Farm to accomplish its goals of providing news about State Farm.

The use of State Farm’s trademarks 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 trademarks. See State Farm Mutual Automobile Insurance Company v. Advisory Services, Inc., FA94662 (June 8, 2000); State Farm v. Bulldog, Inc., FA94427 (May 27, 2000); State Farm v. I & B, FA94719 (June 8, 2000); State Farm v. JIT Consulting, FA94335 (April 24, 2000); State Farm v. Life en Theos, FA94663 (June 1, 2000); State Farm v. J & B, Inc., FA94804 (June 13, 2000); State Farm v. Richard Pierce, FA94808 (June 6, 2000).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

The domain name in question is identical to or confusingly similar to the trademark or service mark in which the Complainant has rights. This ruling is consistent with other cases involving State Farm’s trademark as cited above. The public could mistakenly be drawn to respondent’s site by the confusingly similar domain name. Any non-affiliation information would not be received until after the public had gone to the site.

Complainant has proven this element.

Respondent has no rights or legitimate interests in the domain name at issue. Respondent has stated that he will not implement this site until it is legally cleared. Therefore, he has acquired no rights or legitimate interests in the name. Respondent may accomplish his stated purpose of providing news about State Farm without the use of State Farm’s trademark in a name. See Chi-Chi’s, Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000)(finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for "public comment" on the Internet).

Respondent has not proven that he has any right or legitimate interest in the domain name.

Complainant has proven this element.

Respondent has registered and used the name in bad faith. Evidence of bad faith registration can be shown by registering numerous domain names combining marks of others with the word "news". See Hitachi, Ltd v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding evidence of bad faith where the Respondent registered numerous domain names combining marks of others with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, <citreon2000.com>).

ICANN’s Uniform Domain Name Dispute Resolution Policy lists four circumstances which in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith. IV, which applies here, is the use of the domain name to intentionally attempt to attract for commercial gain internet users to the web site by creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web site or of a product or service on the web site. Although Respondent states the site is not in use, actual operation of the site is not necessary for a finding of registration and use in bad faith. Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant. This is evidence of registration and use in bad faith. See DFO, Inc. v. Christian Williams, WIPO D2000-0181(May 14, 2000) where the respondent used a domain name similar to the complainant’s mark (dennys.net) for a site dedicated to comments about the complainant’s business.

An almost identical case to this case is Wayne Shaw v. Daniel Fitzgerald, FA 93770 (March 30, 2000). The domain name used the registered mark of an insurance company. Respondent claimed to be using the name as an information site for individuals looking for insurance. The arbitrator held the respondent acted in bad faith in attracting users to its site by using the mark of another.

Complainant has proven this element.

The panel directs that the domain name statefarmnews.com be transferred to Complainant, State Farm Mutual Automobile Insurance Company.