DECISION

State Farm Mutual Automobile Insurance Company v. Stephen D. Porter

Claim Number: FA0105000097129

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL, USA (“Complainant”) represented by Janice K. Forrest.  Respondent is Stephen D. Porter, Miami Beach, FL, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmtrips.com> registered with Melbourne IT.

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 1, 2001, Melbourne IT confirmed by e-mail to the Forum that the domain name <statefarmtrips.com> is registered with Melbourne IT and that Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by the Melbourne IT 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@statefarmtrips.com 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 <statefarmtrips.com> domain name is confusingly similar to Complainant’s STATE FARM mark.

Respondent has no rights or legitimate interests in the <statefarmtrips.com> domain name.

Respondent registered and passively used the <statefarmtrips.com> 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 conjunction with insurance and related financial services.  Complainant registered the famous STATE FARM mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,979,585 on June 11, 1996.  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 <statefarmtrips.com> domain name on June 28, 2000.

On July 6, 2000 a cease and desist letter was sent to Respondent.  On October 2, 2000 Respondent replied and stated that he wished to promote “trips that are… sponsored or approved by [Complainant].”  Furthermore, Respondent offered the disputed domain name for sale to Complainant, or in the alternative to license the domain name to the Complainant.  On March 27, 2001 Complainant sent another cease and desist letter to Respondent.  No reply was received.

Respondent has not received any approval, authorization or sponsorship of his alleged business plan from State Farm.  Respondent is not a State Farm agent and is not authorized to act on behalf of State Farm.  There is no existing or contemplated business plan under which State Farm would sponsor or approve trips described by Respondent at the <statefarmtrips.com> domain name.

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 <statefarmtrips.com> domain name contains the words STATE FARM, which is identical to the federally registered trademark of the Complainant.  The addition of the generic word “trips” to the STATE FARM mark makes the <statefarmtrips.com> domain name confusingly similar to Complainant’s mark.  See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complainant’s registered mark) see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 3, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

The Panel finds that 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 <statefarmtrips.com> 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 <statefarmtrips.com> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to the 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 <statefarmtrips.com> 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).

Respondent has failed to come forward to establish whether the alleged business plan is non-commercial in nature.  However, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <statefarmtrips.com> domain name pursuant to the Policy ¶ 4(c)(iii), when Respondent is engaged in passive holding.  

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

Registration and Use in Bad Faith

Respondent has failed to make any legitimate use of the <statefarmtrips.com> domain name in dispute.  Respondent’s passive holding of the disputed domain name is 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).

Respondent’s offer to Complainant to “license the domain name or purchase it outright” is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  Though it is not clear whether Respondent would sell the disputed domain name in excess of out-of-pocket expenses associated with the domain name, his offer to license the domain name to the Complainant would most certainly exceed his out-of-pocket expenses and evidence bad faith.  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

Furthermore, bad faith is evidenced by the obvious connection the <statefarmtrips.com> 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 <statefarmtrips.com> domain name be transferred from Respondent to Complainant.

Honorable Ralph Yachnin (Ret), Panelist

Dated: June 7, 2001

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