national arbitration forum

DECISION

State Farm Mutual Automobile Insurance Company v. Biad Corp a/k/a Nina Biad

Claim Number:  FA0410000348900

PARTIES

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 Biad Corp. a/k/a Nina Biad, 1241 East Captain Oreyfus, Phoenix, AZ 85022 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <allstatefarminsurance.com>, registered with Enom, 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2004.

On October 22, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <allstatefarminsurance.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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@allstatefarminsurance.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 29, 2004 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <allstatefarminsurance.com> domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.

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

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

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

FINDINGS

Complainant is a nationally known company that has been doing business under the name “State Farm” since 1930.  Complainant engages in business in both the insurance and financial services industry.  Complainant registered the STATE FARM INSURANCE mark with the U.S. Patent and Trademark Office (“USPTO”) on September 11, 1979 (Reg. No 1,125,010).

Respondent registered the <allstatefarminsurance.com> domain name on December 5, 2003.  The domain name resolves to a search engine website.

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 that it has rights in the STATE FARM INSURANCE mark through registration with the USPTO and through the continuous use of the mark in commerce since 1930.  See Men’s Wearhouse, Inc. v. Wick,  FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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).

Respondent’s disputed domain name is confusingly similar to Complainant’s STATE FARM INSURANCE mark.  But for the word “all,” Respondent’s <allstatefarminsurance.com> domain name is identical to the STATE FARM INSURANCE mark.  The addition of a generic or suggestive term, such as “all,” does not negate the confusing similarity of Respondent’s domain name pursuance to Policy ¶ 4(a)(i).  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 Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  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).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent uses the disputed domain name to direct Internet traffic to a search engine website.  Since the resulting website links to a variety of general subjects, the Panel infers that Respondent profits from the traffic that is diverted to the search engine website.  Moreover, since the disputed domain name does not logically reference a search engine website, the Panel infers that Respondent purposefully uses Complainant’s STATE FARM INSURANCE mark to generate a profit.  Respondent’s commercial use of the disputed domain name does not constitute rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Since the disputed domain name has no inherent connection to the use of the search engine website, such evidence supports the Panel’s inference that Respondent registered the disputed domain name to trade on the goodwill associated with the STATE FARM INSURANCE mark.  Furthermore, the Panel infers that Respondent had actual or constructive knowledge of Complainant’s mark because the mark was registered with the USPTO.  Therefore, Respondent’s registration and use of the disputed domain name, despite knowledge of Complainant’s interests in the STATE FARM INSURANCE mark, constitutes bad faith pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

Furthermore, Respondent is capitalizing on the goodwill of the STATE FARM INSURANCE mark by using the disputed domain name to divert Internet users to a search engine website.  The Panel infers that Respondent commercially benefits through use of the domain name.  Since the disputed domain name contains entire versions of Complainant’s mark and is used for something completely unrelated to its descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.  Therefore, Respondent’s opportunistic use of the disputed domain name represents bad faith registration and use under Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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 <allstatefarminsurance.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  December 9, 2004

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