DECISION

State Farm Mutual Automobile Insurance Company v. John Strelecky

Claim Number:  FA0309000193601

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company, One State Farm Plaza, Bloomington, IL 61710 (“Complainant”).  Respondent is John Strelecky, 6307 Coopers Green Ct., Orlando, FL 32819 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <segurosstatefarm.com>, registered with Tlds, Inc. d/b/a Srsplus.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically September 5, 2003; the Forum received a hard copy of the ComplaintSeptember 5, 2003.

On Sepember 25, 2003, Tlds, Inc. d/b/a Srsplus confirmed by e-mail to the Forum that the domain name <segurosstatefarm.com> is registered with Tlds, Inc. d/b/a Srsplus and that Respondent is the current registrant of the name. Tlds, Inc. d/b/a Srsplus verified that Respondent is bound by the Tlds, Inc. d/b/a Srsplus 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 September 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 2003, 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@segurosstatefarm.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 October 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <segurosstatefarm.com>, is confusingly similar to Complainant’s STATE FARM mark.

2. Respondent has no rights to or legitimate interests in the <segurosstatefarm.com> domain name.

3. Respondent registered and used the <segurosstatefarm.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the mark, STATE FARM, in commerce in connection with the promotion, marketing, advertising and selling of insurance since 1930. Complainant registered its STATE FARM mark with the United States Patent and Trademark Office on June 11, 1996.  Complainant has used the domain name <statefarm.com> since 1995.

Respondent registered the <segurosstatefarm.com> domain name January 17, 2003.  Respondent is not currently using the disputed 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the STATE FARM mark through registration with the USPTO and by continuous use of the mark in commerce since at least 1930.

The domain name registered by Respondent, <segurosstatefarm.com>, is confusingly similar to Complainant’s STATE FARM mark because it incorporates Complainant’s entire mark and merely adds the word  “seguros.”  Although “seguros” is not a recognizable English word, its addition to Complainant’s mark does not prevent the mark from remaining the dominant feature of the disputed domain name.  Thus, the <segurosstatefarm.com> domain name does not overcome a Policy ¶ 4(a)(i) confusingly similar analysis.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent did not submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Moreover, Respondent failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

By passively holding the domain name without use, Respondent has not demonstrated a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondent has not established any rights or legitimate interests in a domain name); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding no legitimate rights or interests when Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).

Respondent has not come forward with any evidence to establish that it is commonly known as SEGUROS STATE FARM or <segurosstatefarm.com>.  Moreover, because of the fame of Complainant’s STATE FARM mark, Respondent would be hard pressed to establish that it is commonly known as the disputed domain name.  As a result, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant has shown that Respondent registered a domain name containing Complainant’s well-known and well-established mark.  Respondent also held the name passively without demonstrating any plan for good faith use of the mark. It constitutes bad faith to register the mark of another in a domain name and hold the site passively. 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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or web site that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

Furthermore, given the fame of Complainant’s STATE FARM mark it can be inferred that Respondent had actual knowledge of Complainant’s mark when it registered the <segurosstatefarm.com> domain name.  Registration of a domain name confusingly similar to Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

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

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <segurosstatefarm.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 10, 2003.

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