Generic Top Level Domain Name (gTLD) Decisions

The Complainant is State Automobile Mutual Insurance Compay, Columbus, OH, USA ("Complainant") represented by David L. Sigalow. The Respondent is Lr3 Enterprises, Inc., Maitland, FL, USA ("Respondent").

The domain name at issue is "stateauto.com," registered with Network Solutions, Inc..

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Bruce E. Meyerson as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 11, 2000; the Forum received a hard copy of the Complaint on December 11, 2000.

On December 13, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "stateauto.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 December 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 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@stateauto.com by e-mail.

On January 16, 2001 pursuant to Complainant’s request to have the dispute decided by a One-Member panel, the Forum appointed Bruce E. Meyerson as Panelist.

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

A. Complainant

Complainant alleges that it has been using the mark "State Auto" as a service mark since 1963, prior to the registration of the domain name "stateauto.com" by the Respondent. Complainant alleges that it has registered the mark "State Auto" with the United States Patent and Trademark Office. Complainant alleges that Respondent is not making a legitimate or fair use of the domain name and that Complainant's goodwill has been eroded and damaged by Respondent's ownership and use of the domain name "stateauto.com."

B. Respondent

Respondent alleges that there is no basis to conclude that the words "State Auto" have acquired any secondary meaning sufficient to distinguish the Complainant's services from others. Respondent contends that the term "State Auto" is used by many other businesses and it is unlikely that the services of the Complainant can be confused with those of the Respondent based upon the use of the domain name "stateauto.com." Respondent is the owner of four insurance agencies in Oklahoma, all of which use the words "State Auto" in their name.

The domain name "stateauto.com" is confusingly similar to the service mark "State Auto" registered by the Complainant with the United States Patent and Trademark Office on August 14, 1990. Respondent has no right or legitimate interest in the domain name as it is not using the domain name "stateauto.com" to carry on its business, and users of its site are directed to another site where it does conduct business. Respondent discontinued the use of the domain name "stateauto.com" at the request of the Complainant and argues that its voluntary decision should not be taken into account in determining the outcome of this dispute. However, if Respondent had a legitimate, ongoing business use and need for the domain name "stateauto.com" presumably it would have decided to assert that interest, maintain its use, and not abandon the site. Moreover, there is evidence that Respondent is using the domain name "stateauto.com" in bad faith because (1) Respondent is maintaining no business or commercial use of the site, and (2) Respondent is offering to sell the site for $50,000.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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:

(3) the domain name has been registered and is being used in bad faith.

The domain name "stateauto.com" is confusingly similar to the service mark "State Auto" registered by the Complainant with the United States Patent and Trademark Office on August 14, 1990.

Respondent has no legitimate interest in the domain name as it is not using the domain name "stateauto.com" to carry on its business, and users of its site are directed to another site where it does conduct business.

Respondent has abandoned the site for its own business purpose and its continued ownership of the site, for no apparent reason other than to sell it, constitutes a passive holding which is evidence of bad faith. See, e.g., Cruzeiro Licenciamentos Ltda. v. Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000).

The domain name "stateauto.com" is hereby transferred from Respondent to the Complainant.