Generic Top Level Domain Name (gTLD) Decisions

STATE FARM MUTUAL
AUTOMOBILE INSURANCE COMPANY,
COMPLAINANT,

vs.

J & B, INC.
RESPONDENT.

DECISION
Forum File Number FA # 94804

The above styled matter came on for an administrative hearing on  June 12, 2000,                       

before the undersigned arbitrator in accordance with ICANN’S Uniform Domain Name Dispute Resolution Policy and Rules. The arbitrator certifies that he has no conflict of interest in this matter. After due consideration of the written record as submitted, the following decision was made:

            PROCEDURAL FINDINGS

            Domain Name:             Mystatefarm.com

            Domain Registrant:                    J & B  Inc.

            Date of Registration:                 January 24, 2000

            Domain Registrar:                     Network Solutions

            This action was commenced by the Complainant filing its Complaint with the National Arbitration Forum (The Forum) on May 9, 2000. Thereafter, following a compliance review made in accordance with ICANN Rule 4, all necessary parties were duly notified of the commencement of the administrative proceedings. The Respondent   

failed to file a response within twenty days and, therefore, is in default.

FACTUAL BACKGROUND

PARTIES ALLEGATIONS: 

            The Complainant started using the State Farm trademark in 1930 and registered it with the U.S Patent & Trademark  Office June 11,1996. Complainant also registered with the Patent and Trademark Office the following marks that all include the phrase “State Farm”: State Farm Insurance; State Farm Insurance Companies; the State Farm Insurance 3 oval logo; State Farm Bank; State Farm Federal Savings Bank logo; State Farm Federal Savings Bank; State Farm Fire and Casualty Co. logo; State Farm Benefit Management Account; State Farm Bayou Savings Classic logo; and State Farm Bayou Classic. Complainant also recently filed for registration “statefarm.com”. In Canada Complainant has registered: State Farm oval 3 logo; State Farm Insurance Companies; State Farm Insurance; and the State Farm Fire and Casualty Co. logo. Pending registration are the marks “State Farm” and “statefarm.com”.  In the European Community the State Farm 3 oval logo is registered and currently pending are State Farm; State Farm Insurance; and State Farm Insurance Companies. In Mexico the State Farm 3 oval logo is registered and currently pending are: State Farm; and State Farm Insurance. The domain name registered by the Respondent incorporates the Complainant’s trademark “State Farm”.

            On February 25, 2000, Complainant sent Respondent a “cease and desist” letter to the address as shown on the domain name registration. The letter was returned undeliverable as addressed.

            On March 14, 2000, and April 14, 2000,  Complainant sent “cease and desist” letters to the e-mail address shown in the “Whois” registrant information. Complainant did not receive an answer to the e-mails.

            The Complainant has    had  internet presence since 1995. (statefarm.com). As part of its offerings, Complainant’s home page includes a section entitled “My State Farm”. The “My State Farm” link takes a customer to a section of the site where customers may customize their view of  the state Farm site.

            For over 70 years Complainant has expended substantial time, effort and funds  to develop the good will associated with the name “State Farm” as well as to promote and

develop   its other trademarks. Complainant does not allow  unauthorized parties to use its marks.

            Because of its substantial efforts and long history, the public associates the phrase “State Farm” with the Complainant.

            The Respondent is not associated with the Complainant. Respondent is not doing business under the domain name, nor is the Respondent commonly known under the domain name.  The Respondent is not using, nor or there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Respondent’s          failure or refusal to respond to Complainant’s inquiries or to explain its actions are evidence of bad faith.      

            Complainant asks that the domain name be transferred to the Complainant.

DISSCUSSION 

            In order to justify transfer of a domain name, Paragraph 4(a) of the ICANN Policy provides that a complainant must prove each of the following:

(1)  that 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)  that the respondent has no legitimate interests in respect of the domain name;

                  and

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

DECISION

                        After careful review of the Complaint and written materials submitted by the Complainant, I find that the Complainant has proven its claim in that the Respondent:

(1)  Registered a domain name which is identical or confusingly similar to the marks of the Complainant; and

(2)  Respondent  has no rights or legitimate interests in the disputed domain name; and

(3) Respondent has acted in bad faith.

            Accordingly, the relief requested by the Complainant is granted and the disputed domain name ‘Mystatefarm.com” is transferred to the Complainant.

June 13, 2000                                                  Honorable Louis E. Condon, Arbitrator