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Generic Top Level Domain Name (gTLD) Decisions |
State Farm Mutual Automobile Insurance
Company v. Domain Master
Claim
Number: FA0409000335440
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), represented by Janice K. Forrest, One
State Farm Plaza A-3, Bloomington, IL 61710.
Respondent is Domain Master (“Respondent”),
Bodden Town, Grand Cayman KY, Cayman Islands.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefarmcom.com>, registered with Address
Creation.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 27, 2004;
the Forum received a hard copy of the
Complaint on September 28, 2004.
On
October 1, 2004, Address Creation confirmed by e-mail to the Forum that the
domain name <statefarmcom.com> is registered with Address Creation
and that Respondent is the current registrant of the name. Address Creation has
verified that
Respondent is bound by the Address Creation 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
October 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
October 25, 2004 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@statefarmcom.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
November 1, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmcom.com>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarmcom.com> domain name.
3. Respondent registered and used the <statefarmcom.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
been doing business under the name “State Farm” since 1930. Since that time, Complainant has used the
name STATE FARM as a service mark to identify itself as the source of
“underwriting and
servicing auto, homeowners, life and fire insurance.” Complainant registered the STATE FARM mark
with the United States Patent and Trademark Office on June 11, 1996 (Reg. No.
1,979,585).
The record
indicates that Respondent registered the disputed domain name <statefarmcom.com>
on May 3, 2004. Respondent has made
no use of the domain name.
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
draw such inferences it 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.
The registration
of a mark with a legitimate governmental authority is sufficient for a
complainant to establish a presumption of
rights in a mark pursuant to
paragraph 4(a)(i) of the Policy. In the
instant case, Complainant registered the STATE FARM mark with the United States
Patent and Trademark Office on June 11, 1996,
which grants Complainant a
presumption of rights in the mark.
Respondent’s failure to respond and overcome the presumption effectively
establishes Complainant’s rights in the STATE FARM mark pursuant
to paragraph
4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The domain name <statefarmcom.com>
incorporates Complainant’s STATE FARM mark in its entirety and has merely
added the term “com” to the end of the mark.
Panels have found the addition of the term “com” to a third party’s mark
to be insignificant in distinguishing a domain name from
the mark. Therefore, consistent with prior decisions
under the Policy, the Panel finds the domain name <statefarmcom.com> to
be confusingly similar to Complainant’s STATE FARM mark pursuant to paragraph
4(a)(i) of the Policy. See Borders
Prop., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (finding
the domain name <borderscom.com> confusingly similar to the BORDERS mark
because the “added ‘com’ does not defeat a confusing similarity claim because
it takes advantage of a common typographical error”);
see also Bank of Am.
Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s
addition of the equivalent of a top-level domain name within the disputed
second-level domain name is equally unable to create a distinction capable of
overcoming a finding of confusing similarity.”).
Complainant has
established Policy ¶ 4(a)(i).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the domain
name <statefarmcom.com>.
Once such an assertion is made, the burden is shifted to Respondent to
advance concrete evidence to rebut the assertion. A panel has expressed the rationale behind shifting the burden to
Respondent by stating that the information required to prove rights
or legitimate
interests in a domain name is “uniquely within the knowledge and control of the
respondent.” G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002).
Respondent has
failed to file a Response to the Complaint.
Since Respondent has failed to rebut Complainant’s assertions, the Panel
may accept all reasonable assertions set forth in the Complaint
as true. The Panel may also construe Respondent’s
failure to rebut Complainant’s assertions as an implicit admission that
Respondent lacks
rights and legitimate interests in the disputed domain name. See
Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a
complainant’s allegations allows a panel to accept
all of the complainant’s
reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a
complaint allows a panel to make reasonable inferences
in favor of a
complainant and accept the complainant’s allegations as true); see also 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).
Complainant
states that it “did not authorize the Respondent to register the domain name or
to use the State Farm trademarks for the
Respondent’s business purposes.” Complaint at Sec. 5. Indeed, the Panel adopts the view expressed
in Telstra Corp. v. Nuclear Marshmallow,
where it was found that the respondent lacked rights and legitimate interests
in the domain name because the respondent was not
authorized by the complainant
to use its trademarks and the mark was distinct in its nature, such that one
would not legitimately
choose it unless seeking to create an impression of an
association with the complainant. See Telstra Corp. v. Nuclear Marshmallow
D2000-0003 (WIPO Feb.18, 2000).
Moreover, there
is nothing in the record to indicate that Respondent is commonly known by the
domain name <statefarmcom.com> pursuant to paragraph 4(c)(ii) of
the Policy. The fact that Respondent
has not used the domain name in connection with an active website is futher
evidence that Respondent is not
commonly known by the domain name. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly
known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
Complainant has
established Policy ¶ 4(a)(ii).
Paragraph 4(b)
of the Policy sets forth examples of bad faith registration and use. However, those examples are merely
illustrative. Therefore, the Panel is
free free to look at other circumstances that may evidence bad faith
registration and use. See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that
paragraph 4(b) of the Policy sets forth certain circumstances, without
limitation, that shall be evidence of registration and use of a domain name in
bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended
to be illustrative, rather than exclusive.”);
see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in paragraph 4(b) of
the Policy is not an exhaustive list of
bad faith evidence).
In the instant
case, Respondent registered a domain name that is confusingly similar to
Complainant’s STATE FARM mark. In fact,
in prior decisions decided under the Policy, panels have found Complainant’s
STATE FARM mark to be famous and well known.
See State Farm Mut. Auto. Ins. Co. v. Orloske, FA
105735 (Nat. Arb. Forum Apr. 5, 2002) (“As the result of over seventy years of use, and substantial
financial investment in marketing and promoting its mark, Complainant's
STATE
FARM mark has become a famous mark in the United States.”); see also State
Farm Mut. Auto. Ins. Co. v. Miller, FA
105940 (Nat. Arb. Forum May 2, 2002) (“Complainant's
[STATE FARM] mark is well known and Respondent has offered no good faith
explanation for registering a domain name that
contains Complainant's mark in
its entirety. Further, in such circumstances, Respondent's registration and use
of the disputed domain
name is considered bad faith.”); see also State
Farm Mut. Auto. Ins. Co. v. Kaufman, FA
94335 (Nat. Arb. Forum Apr. 24, 2000) (“Complainant
has widely and continuously used the mark 'STATE FARM' as a nationally known
insurance company with policy holders in
the United States and Canada. Through
extensive use STATE FARM has become a famous mark.”).
Similarly, panels have found
bad faith registration and use of domain names pursuant to paragraph 4(a)(iii)
of the Policy when a respondent
(1) registers a domain name that is identical
or confusingly similar to a well-known or famous third-party mark, (2) fails to
connect
the domain name to an active website, and (3) fails to provide evidence
to controvert a complainant’s allegation of bad faith registration
and use. In the instant case, the Panel finds that
Respondent registered and used the disputed domain name in bad faith by
registering a domain
name that incorporates Complainant’s famous STATE FARM
mark, by failing to connect the domain name to an active website, and by
failing
to controvert Complainant’s allegations of Respondent’s bad faith
registration and use. See Kraft
Foods (Norway) v. Wide,
D2000-0911 (WIPO Sept. 23, 2000) (finding 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”);
see also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where
Respondent failed to provide any evidence to controvert Complainant's
allegation
that it registered the domain name in bad faith and where any future
use of the domain name would do nothing but cause confusion
with Complainant’s
famous mark, except in a few limited noncommercial or fair use situations,
which were not present).
Moreover, given
the fame of Complainant’s STATE FARM mark, it stretches the imagination to
believe Respondent was ignorant of Complainant’s
rights in the mark, especially
given Respondent’s use of the mark for nearly 75 years. Therefore, the Panel finds that Respondent
should have reasonably been aware of Complainant’s rights in the STATE FARM
mark prior
to registering a domain name that wholly incorporated Complainant’s
mark, which is further evidence of bad faith registration and
use pursuant to
paragraph 4(a)(iii) of the Policy. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June
14, 2000) (finding that the fame of the YAHOO! mark negated any plausible
explanation for Respondent’s registration
of the <yahooventures.com>
domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have
been aware of Complainant’s trademarks,
actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith,
[2002] USCA9 115; 279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse.").
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <statefarmcom.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
November 15, 2004
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