Generic Top Level Domain Name (gTLD) Decisions

State Farm Mutual Automobile Insurance Company
COMPLAINANT,

vs.

LIFE EN THEOS
RESPONDENT.

DECISION
File No:  FA0004000094663

   The above entitled matter came on for an administrative hearing on May 28, 2000 before Richard B. Wickersham, the Arbitrator assigned to this matter on the Complaint of State Farm Mutual Automobile Insurance Company (Complainant) against Life en Theos (Respondent).  Upon the written submitted record, including the Complaint and the Response to the Complaint the following Decision is rendered:

                                                      PROCEDURAL FINDINGS

            The domain names that are the subject of the Complaint: Rule 3(b)(vi) statefarmcustomerservice.com and statefarm-insurance.com.

            The Registrar Company with whom the domain names are registered (Rule 3(b)(vii) Registrar's Name: MelbourneIT d/b/a/ Internet Names Worldwide, Level 2, 120 King Street, Melbourne VIC 3000, Australia; telephone number 61-3-8624-2300; fax number 61-3-9620-2388; e-mail address help@inww.com.au.

            The trademark upon which the Complaint is based: Rule 3(b)(viii) State Farm, State Farm Insurance, State Farm Insurance Companies.

            After reviewing the Complaint and determining it to be in administrative compliance the National Arbitration Forum ("The Forum") forwarded the Complaint to Respondent 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 INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS ("ICANN") and Respondent that the administrative proceeding had commenced.  Respondent has submitted a Response to the Forum within twenty (20) days pursuant to Rule 5(a) which time has now expired.  The Complaint and the Response and all Exhibits were forwarded to the Arbitrator for Decision.

            Respondent agreed to resolve any disputes regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.  Neither the Complainant nor the Respondent has contested the jurisdiction of the Forum or the Arbitrator assigned to resolve this controversy.

                                                                    DECISION

1.         A Complaint was submitted by State Farm Mutual Automobile Insurance Company in the above captioned matter, received April 25, 2000 by the National Arbitration Forum, thereby commencing an administrative proceeding against Life en Theos, Respondent, pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN).  The Complaint concerned domain names, statefarmcustomerservice.com and statefarm-insurance.com.

2.         In February 2000, Complainant learned that Life en Theos of Phoenix, Arizona, had registered trademarks "State Farm" and "State Farm Insurance" as part of two domain names.

3.         State Farm, Complainant, first began using the State Farm trademark in 1930 and registered it with the United States Patent and Trademark Office, June 6, 1996.  State Farm registered other domain names, all incorporating the Complainant's registered trademark "State Farm."

4.         In February, 2000, cease and desist letters were sent via certified mail to Respondent's  administrative contact and such letters were returned marked "attempted - not known."  Further attempts in March, 2000 to reach Respondent by certified mail were unsuccessful.

5.         Complainant is a nationally known company that has been doing business under the name "State Farm" since 1930.  For over 70 years Complainant has expended substantial time, effort and funds to develop the good will associated with the name "State Farm."

6.         Respondent's domain names, all of which incorporate the Complainant's mark, are confusingly similar to Complainant's servicemark that it has been using since 1930 and to Complainant's other registered marks.

7.         The Respondent has no right or legitimate interest in the disputed domain names.  The Respondent is not associated with the Complainant that owns the servicemark "State Farm."  Moreover, the Respondent is not doing business under the domain names, nor is it commonly known under the domain names.

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

(a)        the Respondent has refused to reply to Complainant's cease and desist letters; certified letters have not been answered; Respondent has not expressed any legitimate use of the disputed name to the Complainant.  Respondent's refusal to explain its actions shows that it is acting in bad faith.

(b)        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.  There is no legitimate content associated with the registered names.  Failure to resolve the domain names to a legitimate website indicates that the Respondent has no legitimate reason for having registered the names and demonstrates bad faith.

(c)        The Respondent has further demonstrated that there is no intent to use the domain names as both are listed for sale on the website greatdomains.com.  The asking price for the domains are $2500 for statefarmcustomerservice.com and $5,000 for statefarm-insurance.com.  The placement of both domains for sale to third parties not affiliated with State Farm Insurance and for a price well in excess of the reasonable expenses associated with registration of the domains demonstrates bad faith.

(d)        The Respondent has registered more than one domain containing the Complainant's trademark without authorization from the Complainant.  These multiple registrations without permission and for no permissible purpose demonstrate bad faith.

(e)        The Respondent is not known by and has never been known by the name "State Farm."  The Respondent does not and has not ever traded under the name "State Farm."  The Respondent does not have any trademark or other intellectual property rights in any of the names in question.

(f)         Despite having registered the names "statefarm-insurance.com" and "statefarmcustomerservice.com" it is believed that the Respondent is not and has never been engaged in the insurance business.  The Complainant, on the other hand, offers insurance products as part of its insurance business.  Registration of a domain name for services that it does not offer shows that the Respondent is acting in bad faith.

                                                                 CONCLUSION

            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:

9.         Respondent's registration of the domain names "statefarm-insurance.com" and statefarmcustomerservice.com" are domain names nearly identical to Complainant's "State Farm" mark and have caused confusion and continue to cause a likelihood of confusion.

10.       Respondent has registered the domain names, "statefarm-insurance.com" and statefarmcustomerservice.com in bad faith because the registration, the use and the current inactivity created and are still creating a likelihood of confusion with Complainant's "State Farm" mark.

            Hence, the domain names registered by Respondent, indicated above, are identical and confusing with Complaint's State Farm mark; further, Respondent has no rights or legitimate interest in the "State Farm" domain name of Complainant and the registration of the domain names "statefarm-insurance.com" and "statefarmcustomerservice.com" was in bad faith and the use of such domain names is in bad faith.

            IT IS HEREBY ORDERED AND DIRECTED that the domain name registration at issue, namely "statefarm-insurance.com" and "statefarmcustomerservice.com" are hereby transferred to the Complainant State Farm Mutual Automobile Insurance Company.

Dated:  June 1, 2000                           

Judge Richard Wickersham, Arbitrator