Generic Top Level Domain Name (gTLD) Decisions

STATE FARM MUTUAL AUTOMOBILE
INSURANCE COMPANY 
COMPLAINANT,

vs.

ADVISORY SERVICES, INC.
RESPONDENT.

DECISION
No.: FA0004000094662

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”) before the presiding panelist, Judge Nelson A. Diaz (Retired), of Philadelphia, PA.  The presiding panelist has confirmed to the National Arbitration Forum that he has no known conflicts of interest.  For the reasons explained below, the Panel holds that the domain names should be transferred to Complainant.

1. The Parties

Complainant is State Farm Mutual Automobile Insurance Company was represented by Janice K. Forrest.

Respondent is Advisory Services, Inc. Michael Sposato filed a response on behalf of Respondent.

2. The Domain Name and Registrar

The domain names at issue are <statefarmfunds.com> and <statefarmsfunds.com>.  The registrar is Network Solutions, Inc. (the “Registrar).

3. Procedural History

The National Arbitration Forum (the “Forum”) received the Complaint on April 25, 2000.  The Forum verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). Pursuant to paragraph 2(a) of the Rules, the Forum thereafter sent the Respondent a notification of the administrative proceeding together with copies of the Complaint.

Although Respondent’s response to the Complaint was submitted after the twenty (20) day deadline under Rule 5(a), the Forum accepted the response.  The Administrative Panel issues its decision below based upon the Complaint, the filed documents, the response, the Policy, the Rules, and the Supplemental Rules.

4. Factual Background

Since 1930, Complainant has being doing business under the name “State Farm”.  Complainant has expended time, effort and resources to develop the goodwill associated with its numerous trademarks and service marks, including the mark, STATE FARM.  The marks are widely used and recognized in the insurance and financial services industries.

Respondent registered the domain name <statefarmfunds.com> on April 7, 1999.

Respondent registered the domain name <statefarmsfunds.com> on March 31, 1999.

Respondent has not resolved the domain names to any active web sites.  By registering the domain names with the Registrar, Respondent agreed to resolve any dispute regarding its domain names pursuant to the Rules and the Policy. 

5. Parties’ Contentions

A. Complainant contends that the domain names in question are substantially similar to Complainant’s STATE FARM marks.

B. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain names. 

C. Complainant contends that Respondent registered and is using the domain names in bad faith.

D. Respondent contests each of these contentions and asserts that it has violated neither the Rules nor the Policy. 

6. Discussion and Conclusions

To obtain the requested relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

i. That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii. That the Respondent has no rights or legitimate interest in the domain name; and

iii. That the domain name has been registered and used in bad faith.

As discussed below, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.

A. Similarity Between Respondent’s Domain Names and Complainant’s Trademarks.

Under paragraph 4(a) of the Policy, it is clear that the domain names registered by Respondent, <statefarmfunds.com> and <statefarmsfunds.com>, are confusingly  similar to Complainant’s STATE FARM marks which are widely used and recognized in the insurance and financial services industries.  The mere addition of the plural “s” in the instance of <statefarmsfunds.com> is not material in determining whether the domain name is confusingly similar to the marks.   Moreover, the addition of the word “funds” does not serve to make the domain names less confusingly similar to Complainant’s marks.  In fact, because Complainant has long provided financial services (and its State Farm Bank actually sells funds) under the State Farm marks, confusion is certain.  The panel concludes that Complainant has met its burden of proof with respect to establishing that the domain names in question are confusingly similar to marks in which Complainant has rights.  

B. Respondent’s Rights or Legitimate Interest in the Domain Names.

Complainant has provided ample evidence that Respondent has no rights or legitimate interest in the domain names: Respondent has never done business or traded under the domain names; Respondent does not have any trademark or intellectual property rights in the domain names; Respondent has never been known by the domain names in question.

Under Paragraph 4(c) of the Policy, Respondent may rebut Complainant’s allegations by demonstrating its rights or legitimate interest in the domain name.   If proven, the following non-exclusive circumstances may serve as evidence of Respondent’s rights or legitimate interest in the domain name:

i. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

ii. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

iii. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent has presented no reliable evidence that it has any rights or has made any legitimate use of the disputed domain names.  On December 29, 1999, many months prior to the initiation of this proceeding, Respondent indicated to Complainant by letter that it intended to make legitimate, noncommercial uses of the domain name.  To wit, Respondent indicated an intention to use the domain names “to exercise my right to publish critical commentary about State Farm.”  While Respondent may be correct that this would constitute an arguably fair use of the domain names, the Panel finds the argument to be unpersuasive given the absence of  any evidence showing Respondent’s demonstrable preparations for such use of the domain names.  Complainant has met its burden of proof with regard to the second prong under paragraph 4(a).

C. Respondent’s Bad Faith Registration and Use of the Domain Name.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

i. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

ii. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

iii. Registration of the domain name for the purpose of disrupting the business of competitor; or

iv. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

Complainant alleges that Respondent’s pattern of conduct was intended to prevent others, including Complainant, from obtaining domain names corresponding to their trademarks.  Complainant has demonstrated that Respondent is a serial “domain squatter” with a well-documented pattern of conduct involving the registration of domain names that are substantially similar to the marks and names of well-known entities and companies such as ValueLine, Lenox Hill Hospital and Mount Sinai Hospital.  Such conduct is a plain violation of paragraph 4(b)(ii) of the Policy.

The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain names in bad faith.

7. Decision

Accordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.  The Panel concludes: (a) that the domain names <statefarmfunds.com> and <statefarmsfunds.com> are confusingly similar to Complainant’s marks; (b) that Respondent has no rights or legitimate interest in the domain names; and (c) that Respondent registered and used the domain names in bad faith.  Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain names be transferred to Complainant.

Date:  June 8, 2000                              Honorable Nelson A. Diaz, Arbitrator