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Generic Top Level Domain Name (gTLD) Decisions |
State Farm Mutual Automobile Insurance
Company v. Joshua DuBois
Claim
Number: FA0410000339599
Complainant is State Farm Mutual Automobile Insurance
Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL
61710. Respondent is Joshua DuBois (“Respondent”), 9410 S.
Heinz Road, Canby, OR 97013.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <statefarmarizona.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.), as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
7, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 8, 2004.
On
October 8, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <statefarmarizona.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has
verified that Respondent is
bound by the Go Daddy Software, 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 14, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
November 3, 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@statefarmarizona.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 16, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Honorable
Paul A. Dorf (Ret.), 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <statefarmarizona.com>
domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or
legitimate interests in the <statefarmarizona.com> domain name.
3. Respondent registered and used the <statefarmarizona.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, State Farm Mutual Automobile Insurance
Company, does business in both the insurance and the financial services
industry.
Complainant holds numerous tradmark registrations in Canada, the European
Community, Mexico and with the United States Patent and
Trademark Office for
the STATE FARM mark (Reg. No. 1,979,585 issued June 11, 1996) and other STATE
FARM-related marks (Reg. No. 645,890
issued May 21, 1957; Reg. No. 1,087,834
issued March 21, 1978; and Reg. No. 1,125,010 issued September 11, 1979). Complainant has been doing business under
the STATE FARM mark since 1930, and in 1999 Complainant opened a federally
chartered bank
known as State Farm Bank.
Complainant has expended substantial time, effort and funds to develop
the good will associated with its STATE FARM mark, including
establishing a
presence through television and other media such as the Internet. Complainant has owned and operated a website
at the <statefarm.com> domain name since 1995, where it offers
information relating
to numerous topics including Complainant’s insurance and
financial products and services.
Respondent registered the <statefarmarizona.com> domain name on May 27, 2004. The domain name resolves to the website for Go
Daddy Software, Inc., which is the registrar for the domain name. The webpage indicates that “This page is
parked FREE at GoDaddy.com!” and states “www.statefarmarizona.com coming
soon!” Thus, Respondent has not
developed a website at the <statefarmarizona.com> 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.
Complainant
established with extrinsic proof in this proceeding that it has rights in the
STATE FARM mark through registration with
the United States Patent and
Trademark Office and by continuous use of its mark in commerce for the last
seventy-four years. See 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); see also 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.”).
The <statefarmarizona.com>
domain name registered by Respondent is confusingly similar to Complainant’s
STATE FARM mark because the domain name incorporates
Complainant’s mark in its
entirety and deviates from it only by adding the geographic term
“Arizona.” The mere addition of a
geographic term to Complainant’s registered trademark is insufficient to negate
the confusing similarity of
the domain name.
See VeriSign, Inc. v.
Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity
between Complainant’s VERISIGN mark and the <verisignindia.com>
and
<verisignindia.net> domain names where Respondent added the word “India”
to Complainant’s mark); see also Wal-Mart
Stores, Inc. v. Walmarket Canada, D2000-0150
(WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is
confusingly similar to Complainant’s famous
mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the
<statefarmarizona.com>
domain name. Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the
disputed domain name.
The burden shifts to Respondent to show that it does have rights or
legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that 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”); see also 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
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).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”);
see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact
in the allegations of Complainant to be deemed
true).
Respondent has
not developed a website at the <statefarmarizona.com> domain name,
which resolves to a parked page for Go Daddy Software, Inc. The parked page displays a message stating
“www.statefarmarizona.com coming soon!” and “This page is parked FREE at
GoDaddy.com!”
indicating that the disputed domain name has not yet been developed
and that GoDaddy.com is simply displaying its homepage at the
domain name at no
charge to Respondent. The Panel finds
that this constitutes passive holding of the domain name by Respondent and that
this does not bestow on Respondent
rights or legitimate interests in the domain
name. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that Respondent
made preparations to use the domain name or one like it
in connection with a bona fide offering of goods and services before notice
of
the domain name dispute, the domain name did not resolve to a website, and
Respondent is not commonly known by the domain name);
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); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat.
Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be
found when Respondent fails to use
disputed domain names in any way).
Finally,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <statefarmarizona.com> domain
name. Furthermore, Complainant has not
authorized or licensed Respondent to use its STATE FARM mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See 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
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark
and never applied
for a license or permission from Complainant to use the trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name,
additional factors can also be
used to support findings of bad faith registration and use. The Panel looks to the totality of the
circumstances. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel
must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Respondent’s
registration of the <statefarmarizona.com> domain name, which
includes Complainant’s famous STATE FARM mark in its entirety, suggests that
Respondent knew of Complainant’s
rights in the mark. Furthermore, Complainant’s mark is registered with the United
States Patent and Trademark Office and has been substantially promoted
by
Complainant since 1930. Therefore, the
Panel finds that Respondent chose the disputed domain name based on the
distinctive and well-known qualities of Complainant’s
mark and that this is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should
have been aware of
Complainant’s trademarks, actually or constructively”); 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).
Furthermore,
Respondent has failed to make any use of the <statefarmarizona.com>
domain name, as evidenced by the fact that the domain name resolves to the
registrar’s website, which states that the page has been
parked for free by
GoDaddy.com. Thus, the Panel finds that
Respondent’s passive holding of the domain name is evidence of bad faith
registration and use pursuant
to Policy ¶ 4(a)(iii). See Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in
bad faith); 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); see also E. & J. Gallo Winery v. Oak Inv. Group,
D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or
should have known of Complainant’s famous GALLO
marks and (2) Respondent made
no use of the domain name <winegallo.com>).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <statefarmarizona.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
December 1, 2004
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