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State Farm Mutual Automobile Insurance Company v. Cesar Gomez a/k/a cebusiness.com [2003] GENDND 329 (3 April 2003)


National Arbitration Forum

DECISION

State Farm Mutual Automobile Insurance Company v. Cesar Gomez a/k/a cebusiness.com

Claim Number:  FA0302000145206

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company, Bloomington, IL (“Complainant”) represented by Janice K. Forrest, of State Farm Mutual Automobile Insurance Company. Respondent is Cesar Gomez a/k/a cebusiness.com, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <statefarmreps.com>, registered with Gkg.Net, Inc.

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 7, 2003; the Forum received a hard copy of the Complaint on February 7, 2003.

On February 10, 2003, Gkg.Net, Inc. confirmed by e-mail to the Forum that the domain name <statefarmreps.com> is registered with Gkg.Net, Inc. and that Respondent is the current registrant of the name. Gkg.Net, Inc. has verified that Respondent is bound by the Gkg.Net, Inc. 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 February 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 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@statefarmreps.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 March 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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. Respondent’s <statefarmreps.com> domain name is confusingly similar to Complainant’s STATE FARM mark.

2. Respondent does not have any rights or legitimate interests in the <statefarmreps.com> domain name.

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

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

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, first began using its STATE FARM mark as early as 1930. On June 11, 1996, Complainant registered its STATE FARM mark on the Principal Register of the U.S. Patent and Trademark Office (U.S. Reg. No. 1,979,585). Only authorized agents or representatives of Complainant are authorized to operate under the STATE FARM mark.

Under the STATE FARM mark, Complainant operates in both the insurance and the financial services industry. In 1995, Complainant began using the <statefarm.com> domain name to provide information about its insurance and financial service products, as well as its independent contractor agents. By 1999, Complainant was operating a Federal Chartered Bank known as State Farm Bank. Complainant has expended substantial time, effort, and funds to develop good will and consumer recognition of its STATE FARM mark.

Respondent, Cesar Gomez a/k/a cebusiness.com, registered the <statefarmreps.com> domain name on June 21, 2002, and is not licensed or authorized to use the STATE FARM mark for any purpose. Respondent has made no use of the domain name since its registration.

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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the STATE FARM mark through registration on the Principal Register of the U.S. Patent and Trademark Office.

Respondent’s <statefarmreps.com> domain name is confusingly similar to Complainant’s STATE FARM mark. Complainant’s entire STATE FARM mark is duplicated in Respondent’s domain name, along with the addition of the word “reps.” This diminutive form of the word “representatives” does not distinguish the domain name from Complainant’s mark. Only authorized agents or “representatives” of Complainant are authorized to operate under the STATE FARM mark, and the addition of this word to Complainant’s mark dispels no confusion for the purposes of Policy ¶ 4(a)(i). See 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); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Accordingly, the Panel finds that the <statefarmreps.com> domain name is confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In this dispute, the Panel chooses to view Respondent’s failure to respond as evidence that it has no rights or legitimate interests in the infringing domain name. 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Complainant has the initial burden of demonstrating that Respondent has no rights or legitimate interests in the disputed domain name. Complainant can meet this burden, thus shifting it to Respondent, by showing that none of the three enumerated protections for domain name registrants in Policy ¶ 4(c)(i)-(iii) apply to Respondent. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent failed to respond to the Complaint in this dispute, and has made no use of the disputed domain name since its registration. Not using a domain name and failing to submit evidence of demonstrable preparations to use it is not, by definition, a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). The same facts support the conclusion that Respondent is not making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vestel Elektronik Sanayi ve Ticaret AS v. 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”); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Considering the fame surrounding Complainant’s STATE FARM mark in the United States (where Respondent is domiciled) and the fact that Respondent appears to be known only as “cebusiness.com” and “Cesar Gomez,” the Panel concludes that Respondent is not “commonly known by” the name STATE FARM REPS or <statefarmreps.com>. Thus, Policy ¶ 4(c)(ii) does not apply to Respondent. See 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"); 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 Respondent does not have rights or legitimate interests in the <statefarmreps.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In determining whether Respondent registered and used the disputed domain name in bad faith, the Panel may look to the provisions of Policy ¶ 4(b) for guidance. However, that list is merely meant to be illustrative, and is not an all-inclusive list of circumstances evidencing bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Respondent, domiciled in the United States, registered an infringing domain name that entirely incorporates Complainant’s federally registered STATE FARM mark. Respondent’s addition of the word “reps” to Complainant’s mark in its <statefarmreps.com> domain name, implying some affiliation with Complainant or authorization to operate under its mark, leads the Panel to infer that Respondent was aware of Complainant’s rights in the mark before registering the domain name. This actual knowledge of Complainant’s rights in the STATE FARM mark, coupled with the constructive notice provided to Respondent via Complainant’s registration of its mark on the Principal Register of the U.S. Patent and Trademark Office, leads the Panel to conclude that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Respondent also used the disputed domain name in bad faith. The infringing nature of Respondent’s <statefarmreps.com> domain name dictates that any use of the domain name by a party other than Complainant would run the risk of confusing Internet users. Here, Respondent has not used the domain name for eight months, and has not demonstrated to the Panel any plan to make a good faith use of the domain name. Therefore, the Panel holds that Respondent’s passive holding of the domain name evidences bad faith use pursuant to Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(a)(iii) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

The Panel thus finds that Respondent registered and used the <statefarmreps.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

James A. Crary, Panelist

Dated:  April 3, 2003


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