Domain name - Domain name dispute resolution policy - U.S. Trademark - Identical - Confusingly similar - Legitimate use - Legitimate interest - Bad faith registration - Bad faith use.

Complainant was owner of United States trademark “State Farm”and of numerous other marks which include the phrase “State Farm”.  Through Complainant's  substantial efforts and long history, the public associates the phrase “State Farm” with them. Respondent registered the domain name, Mystatefarm.com. 

Held, Name Transferred to Complainant.

It is clear that the domain name Mystatefarm.com is identical or confusingly similar to the trademark registered and used by the Complainant. 

The Respondent is not using, nor are there any demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.  The fact that the Respondent has no rights or legitimate interest in respect of the domain name demonstrates bad faith registration and use.  Respondent’s failure or refusal to respond to Complainant’s inquiries or to explain its actions support this finding.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Panel Decision referred to

Condon, Panelist: - 

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