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State Farm Mutual Automobile Insurance Co. v. Daniel Kaufman [2000] GENDND 210 (24 April 2000)


National Arbitration Forum

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com


State Farm Mutual Automobile Insurance Co.

COMPLAINANT,

VS.

Daniel Kaufman

JIT Consulting

RESPONDENT.

DOMAIN NAME DISPUTE DECISION
Forum File No.: FA000 3000094335

___________________________________________

The above entitled matter came on for an administrative hearing on April 24, 2000 before the undersigned on the Complaint of State Farm Mutual Automobile Insurance Company, hereafter "Complainant", against JIT Consulting, hereafter "Respondent". Complainant was represented by Janice K. Forrest, One State Farm Plaza (E-7), Bloomington, Illinois 61710. There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: statefarmdirect.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: JIT Consulting
Date of Domain Name Registration: unknown Date Complaint Filed: March 21, 2000
Due Date for a Response: April 12, 2000
Respondent did not submit a response to the Complaint.
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)l and Rule 4(c): March 23, 2000

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on March 23, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a). Respondent registered the domain name "statefarmdirect.com" with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1 .Complainant owns the following federally registered trademark for STATE FARM: 1,979,585.

  1. Complainant first registered the mark "STATE FARM" on June 11, 1996. Complainant first used the mark "STATE FARM" in 1930. Complainant first used the mark "STATE FARM" in commerce in 1930.
  2. Complainant has widely and continuously used the mark "STATE FARM" as a nationally known insurance company with policy holders in the United States and Canada. Through extensive use STATE FARM has become a famous mark.
  3. Registrant registered the domain name in controversy, "statefarmdirect.com" with the Registrar, Network Solutions.
  4. The Registered domain name, "statefarmdirect.com", is identical or confusingly similar to the trademark or service mark in which the Complainant has rights and the Respondent does not have any right or legitimate interests in respect of the domain name, "statefarmdirect.com", which is the subject of the complaint.
  5. Respondent registered and used the domain name, "statefarmdirect.com", in bad faith as is evidenced by the circumstances which indicate that Respondent registered the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant who was the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
  6. Respondent has registered numerous domain names containing marks of many parties.
  7. The exclusivity of Complainant’s trademark is protected under United States law.
  8. No allegation has been made and no evidence has been presented that Respondent has any right or legitimate interest to the domain name as provided in Rule 4(c).
  9. Complainant’s prayer for relief requests that the domain name be transferred

CONCLUSIONS The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1.The domain name "statefarmdirect.com", registered by Respondent with Network Solutions, is identical or confusingly similar to Complainant's trademark STATE FARM and to which Respondent has no right or legitimate interests.

  1. Respondent registered and used the domain name in bad faith as evidenced by circumstances indicating that Respondent registered and acquired the domain name "statefarmdirect.com" primarily for the purpose of selling, renting or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name.
  2. Under ICANN’s Uniform Domain Name Dispute Resolution Policy Complainant has proven that the domain name should be transferred.

DECISION Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "statefarmdirect.com" REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT. Dated: April 24, 2000, by Judge Karl V. Fink (Ret.), Arbitrator

Honorable Karl V. Fink

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