v.
J & B, Inc
[Indexed as: State Farm Mutual Automobile Insurance Company v. J &
B]
[Indexed as: MYSTATEFARM.COM]
National Arbitration Forum
Administrative Panel Decision
Forum File FA94804
Commenced: 9 May 2000
Judgment: 13 June 2000
Presiding Panelist: Honorable Louis E. Condon
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 Farmand 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. Respondents failure or refusal to respond to Complainants 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 ICANNS
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
Complainants 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, Complainants 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. Respondents failure or refusal to
respond to
Complainants 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
Domain Name Transferred