DECISION

State Farm Mutual Automobile Insurance Company v. Jaysnames

Claim Number: FA0105000097128

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL, USA (“Complainant”) represented by Janice K. Forrest.  Respondent is Jaysnames, South Fallsburg, NY, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarminsurancecompanies.net> registered with TUCOWS, Inc.

PANEL

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 Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 1, 2001; the Forum received a hard copy of the Complaint on May 1, 2001.

On May 2, 2001, TUCOWS, Inc. confirmed by e-mail to the Forum that the domain name <statefarminsurancecompanies.net> 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 May 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 2001 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@statefarminsurancecompanies.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 31, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin, as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The <statefarminsurancecompanies.net> domain name is identical to Complainant’s STATE FARM INSURANCE COMPANIES mark.

Respondent has no rights or legitimate interests in the <statefarminsurancecompanies.net> domain name.

Respondent registered and passively used the <statefarminsurancecompanies.net> domain name in bad faith.

B. Respondent

No response was received from Respondent.

FINDINGS

Since 1930, Complainant has used its STATE FARM family of marks in connection with insurance and related financial services.  Complainant registered the famous STATE FARM INSURANCE COMPANIES mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 645,890 on May 21, 1957.  Complainant has also registered numerous other trademarks and service marks in the United States, Canada, Mexico and the European Union.  Complainant has been in continuous use of the marks since their registrations.

Complainant conducts business on the Internet through its <statefarm.com> website.  The <statefarm.com> website offers Complainant’s customers information regarding insurance and financial service products, consumer information, and information about independent contractor agents.  Furthermore, Complainant has expended substantial amounts of money promoting the STATE FARM family of marks, and developing goodwill.

Respondent registered the <statefarminsurancecompanies.net> domain name on June 7, 2000.

On June 29, 2000 a cease and desist letter was sent to the Respondent.  The letter was returned marked "moved left no forwarding address."  On July 22, 2000 a cease and desist letter was sent to the Respondent via email.  On July 24, 2000 Respondent emailed stating he had requested the domain name be transferred to the Complainant.  The transfer never took place.  An email was sent to Respondent on October 13, 2000 and no response was received.

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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.

Identical and/or Confusingly Similar

The <statefarminsurancecompanies.net> domain name is identical to Complainant’s STATE FARM INSURANCE COMPANIES federally registered trademark.  Neither the lack of space between the words within the domain name, nor the addition of the “.net” is relevant for purposes of finding that the disputed domain name is identical to the Complainant’s registered mark.  See American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks); see also Football Ass’n Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) (finding that domain name <facup.com> is clearly identical to the FA CUP trademark belonging to Complainant). 

The <statefarminsurancecompanies.net> domain name is therefore identical to Complainant’s STATE FARM INSURANCE COMPANIES mark, and Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <statefarminsurancecompanies.net> domain name.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).  Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).

Respondents registration and passive holding of the <statefarminsurance.net> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i).  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <statefarminsurancecompanies.net> domain name, pursuant to the Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <statefarminsurancecompanies.net> domain name pursuant to the Policy ¶ 4(c)(iii), when Respondent is engaged in passive holding of the domain name. 

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <statefarminsurancecompanies.net> domain name and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent expressly agreed, via email correspondence with Complainant’s counsel, to transfer the <statefarminsurancecompnaies.net> domain name to the Complainant, however the transfer never took place.  Respondent’s agreement to transfer the disputed domain name to the Complainant is sufficient evidence that the Respondent has acted in bad faith.  See Marcor International v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy).

Respondent’s passive holding of the disputed domain name is also evidence of bad faith.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, bad faith is evidenced by the obvious connection the <statefarminsurancecompanies.net> domain name has with the Complainant’s enterprise.  Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain name supports a finding of bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

            The Panel finds that the Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <statefarminsurancecompanies.net> domain name be transferred from Respondent to Complainant.

Honorable Ralph Yachnin (Ret), Panelist

Dated: June 7, 2001

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