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Generic Top Level Domain Name (gTLD) Decisions |
State
Farm Mutual Automobile Insurance Company v. Brian Orloske
Claim
Number: FA0203000105735
PARTIES
Complainant is State Farm Mutual Automobile Insurance
Company, Bloomington, IL (“Complainant”).
Respondent is Brian Orloske,
Woodbury, MN (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <statefarmloan.com>,
registered with Network Solutions.
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 Harold Kalina
(Ret.) as Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on March
4, 2002; the Forum received
a hard copy of the Complaint on March 5, 2002.
On March 5, 2002, Network
Solutions confirmed by e-mail to the Forum that the domain name <statefarmloan.com> is registered
with Network Solutions and that Respondent is the current registrant of the
name. Network Solutions has verified
that Respondent is bound by the Network Solutions 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 March 6, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of March 26, 2002 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@statefarmloan.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 April 1, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed Judge
Harold Kalina (Ret.) 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
1. Respondent’s use of
the STATE FARM mark in <statefarmloan.com>
is confusingly similar to Complainant’s family of STATE FARM marks.
2. Respondent has no
rights or legitimate interests in the disputed domain name. Respondent is not commonly known as <statefarmloan.com>,
and Internet users will be confused as to Respondent’s affiliation with
Complainant. Furthermore, Respondent
has not demonstrated that it will use the disputed domain name in connection
with a bona fide offering of
goods and services.
3. Because of the fame
attained by Complainant’s distinctive mark, Respondent had constructive
knowledge of Complainant’s famous mark
when it registered the disputed domain
name. Further, any potential use by
Respondent would result in customer confusion as to the source or sponsorship
of the site. Therefore, Respondent has
registered and used <statefarmloan.com>
in bad faith.
B. Respondent
No Response was
submitted.
FINDINGS
Complainant
has done business under the STATE FARM mark since 1930 and registered the mark
with the United States Patent and Trademark
Office on June 11, 1996,
Registration No. 1,979,585. Complainant
also owns several federally registered marks incorporating STATE FARM, including,
STATE FARM INSURANCE, registered on
September 11, 1979, Registration No.
1,125,010; STATE FARM INSURANCE COMPANIES, registered on May 21, 1957,
Registration No. 645,890;
and STATE FARM BANK, registered on February 15, 2000,
Registration No. 2,319,867. Complainant
engages in business in both the insurance and financial services industry. Complainant has spent substantial time,
effort and funds to develop good will associated with the STATE FARM family of
marks.
Respondent
registered <statefarmloan.com>
on May 7, 2001 and according to Complainant, the website connected with the
domain name in dispute has been “under construction.” Complainant did not grant a license to Respondent to use
Complainant’s STATE FARM mark.
Complainant has sent four cease and desist requests to Respondent and
Respondent has failed to answer all of them.
Two of Complainant’s requests were sent via certified mail in which
Respondent accepted, while the other two requests by Complainant
were via
e-mail.
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 and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) 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; and
(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
Complainant
has established its rights to the STATE FARM mark through over seventy years of
continuous use as well as a federal registration
of the mark with the USPTO.
The
disputed domain name <statefarmloan.com>
is confusingly similar to Complainant’s famous mark. The term “state farm” is the dominating and recognizable portion
of the overall domain name, while “loan” is merely a generic term. It has been held that the addition of the
generic term to an already famous mark does not diminish the confusing
similarity between
the mark and the disputed domain name. Therefore, <statefarmloan.com> is confusingly simliar to Complainant’s
famous STATE FARM mark. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the
Complainant combined with a generic
word or term); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract
from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied). Furthermore, since Complainant is involved
in finance, and has a registered mark that incorporates the term “bank” it can
be inferred
that the confusingly similar nature of the disputed domain name and
Complainant’s mark is even more apparent.
See Marriott Int’l v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain
name <marriott-hotel.com> is confusingly similar
to Complainant’s mark
“Marriott”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to file a Response in this matter.
Therefore, the Panel may presume that Respondent has no rights or
legitimate interests in <statefarmloan.com>.
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).
Therefore,
the Panel may determine that all of the allegations made in the Complaint are
true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21,
2000) (finding that failing to respond allows a presumption that Complainant’s
allegations are true unless
clearly contradicted by the evidence).
Based
on the evidence provided, it appears that Respondent has not made a use out of
the domain name in dispute. Such
inactivity is evidence that Respondent has not used the disputed domain name in
connection with a bona fide offering of goods
or services pursuant to policy ¶
4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint
and had made no use of the domain name in
question); see also Vestel Elektronik
Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “…merely registering the domain name is not sufficient to
establish rights or legitimate
interests for purposes of paragraph 4(a)(ii) of
the Policy”).
Respondent
has not been granted a license to use the disputed domain name. Further, the fame attained by Complainant’s
STATE FARM mark leads the Panel to hold that it would be difficult to imagine
anyone,
other than Complainant, commonly known as <statefarmloan.com>. Therefore,
Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de
Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides
Complainant could claim a right or a legitimate interest with respect
to the
domain name <nike-shoes.com>); 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).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
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. Based
on this fame, the Panel may infer that Respondent had constructive knowledge of
the STATE FARM mark when it registered <statefarmloan.com>. Therefore, Respondent has registered the
disputed domain name in bad faith. See Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given
the world-wide
prominence of the mark and thus Respondent registered the domain name in bad
faith); see also Victoria's Secret v.
Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of
the notoriety of Complainants' famous marks, Respondent had actual
or
constructive knowledge of the BODY BY VICTORIA marks at the time she registered
the disputed domain name and such knowledge constituted
bad faith).
According
to Complainant, Respondent has not made a use out of <statefarmloan.com> and has failed to respond to numerous
cease and desist requests by Complainant.
Absent any evidence to the contrary, the Panel finds that such passive
use is evidence that Respondent has registered and used the
disputed domain
name in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7,
2000) (concluding that Respondent’s passive holding of the domain name
satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the
domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith).
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 the requested relief be hereby granted.
Accordingly,
it is Ordered that the domain name <statefarmloan.com>
be transferred from Respondent
to Complainant.
Judge
Harold Kalina (Ret.)
Dated: April 5, 2002
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