Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Pattern of behaviour - "Typo" squatting.

Complainant is a registrant of the trademark, STATE FARM.  It has used the mark in relation to numerous business activities and services, specifically the insurance industry, since 1930.  Respondent registered the domain name, STATEFARMS.COM in February of 1999.

Held, Name Transferred to Complainant.

Complainant's mark, STATE FARM is confusingly similar to the domain name, STATEFARMS.COM regardless of the addition of the plural "S".

Respondent has failed to show that it has planned to make use of the domain name in relation to any offering of goods or services.  Respondent is not known nor has it ever been known by the mark or any name related to the Complainant's mark. Therefore, Respondent has no right or legitimate interest in the mark.

Respondent has demonstrated a pattern of behaviour that includes registering domain names that precludes others from making use of those names that correspond to their registered marks, offering domain names for sale, and otherwise registering domain names with the intent to divert traffic from the websites of others.  It was therefore held that Respondent registered the domain name at issue in bad faith.

Respondent offered to the sell the domain name to Complainant for valuable consideration in excess of any out of pocket expenses directly related to the costs of its registration.  It also used the domain name to divert traffic from Complainant's website for its own commercial gain by creating a likely hood confusion amongst internet users who misspell Complainant's domain name, a tactic used by Respondent in the past.  This was held to be bad faith use.

Policies referred to

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

Decision referred to
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Diaz, Panelist:-

The above captioned matter came on for an administrative hearing on June 6, 2000
before the undersigned panelist:

1.      The Parties
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”).  Complainant was represented by Janice K. Forrest. 

Respondent is Commercial Real States (“Respondent”). Respondent filed no response and therefore was not represented.

2.      The Domain Name and Registrar
The domain name at issue is <statefarms.com>.  The registrar is Network Solutions, Inc. (the “Registrar”).

3.      Procedural History
The National Arbitration Forum (the “Forum”) received the Complaint on May 2, 2000.  The Forum verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). Pursuant to paragraph 2(a) of the Rules, the Forum thereafter sent the Respondent a notification of the administrative proceeding together with copies of the Complaint. 

As Respondent did not submit a response to the Complaint within twenty (20) days pursuant to Rule 5(a), the Administrative Panel issues its decision below based upon the Complaint, the filed documents, the Policy, the Rules, and the Supplemental Rules without the benefit of any response from Respondent.

4.      Factual Background
Since 1930, the Complainant has being doing business under the name “State Farm”.  Complainant has expended time, effort and funds to develop numerous trademarks and service marks, including the mark, STATE FARM, which is used in the insurance and financial services industries. 

Respondent registered the domain name <statefarms.com> on February 23, 1999.  Initially, Respondent used this domain name to link to an adult content web site.  More recently, Respondent has resolved the domain name to a web site where the domain name is offered for sale to the public.

5.      Parties’ Contentions
A.     Complainant contends that the domain name <statefarms.com> is substantially similar to Complainant’s STATE FARM mark.

B.     Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name.  

C.     Complainant contends that Respondent registered and is using the domain name in bad faith in violation of the Policy.

D.     Respondent does not contest these contentions.

6.      Discussion and Conclusions
The undersigned certifies that he has acted independently as the Presiding Panelist and that he has no known conflicts of interest to serve as the Arbitrator in this proceeding.  Having been duly selected, and being impartial, the undersigned provides the following discussion and conclusions:

To obtain the requested relief, paragraph 4(a) of the Policy requires the Complainant to prove each of the following:

i. 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; and 

ii. That the Respondent has no rights or legitimate interest in the domain name; and

iii. That the domain name has been registered and used in bad faith.

A.     Similarity Between Registrant’s Domain Names and  Complainant’s Trademarks.

Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, <statefarms.com>, is substantially similar to, and, in fact, nearly identical to Complainant’s STATE FARM mark.  The addition of the plural “s” is not significant in determining similarity.  The panel concludes that Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainant’s trademark.

B.     Respondent’s Rights or Legitimate Interest in the Domain Names.

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate
interest in the domain name includes:

i. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

ii. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

iii. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent has not shown, and cannot show, that it has made any legitimate use of the disputed domain name which is confusingly similar to trademarks of Complainant that have been widely used in commerce since as early as 1930 and continuously. Complainant thus has met its burden of proof with regard to the second prong under paragraph 4(a). 

C.     Respondent’s Bad Faith Registration and Use of the Domain Name.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

i. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

ii. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

iii. Registration of the domain name for the purpose of disrupting the business of competitor; or

iv. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

Complainant alleges that when Respondent’s agent was asked to give up the domain name in question, he offered to sell it for $1,000.00 and thus violated the prohibition under paragraph 4(b)(i) against selling domain names for profit. 

Respondent does not contest this allegation.

Moreover, Complainant provides unrefuted evidence that Respondent is a serial “typo-squatter” with a demonstrable pattern of conduct involving the registration of domain names that are substantially similar to the famous marks and names of other companies, such as Audi and MSNBC.  The alleged conduct is a plain violation of paragraph 4(b)(ii) of the Policy.

Further, Complainant alleges that Respondent violated the principles set forth at 4(b)(iv) of the Policy by using the <statefarms.com> domain name to divert, for commercial gain, Internet users to Respondent’s adult oriented web site.  Such misleading use of the  domain name creates a likelihood of confusion with the trademark owner’s marks.  Moreover, such use is likely to tarnish Complainant’s goodwill and reputation in its marks.       

The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain name in bad faith.

Accordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.

7.      Decision
The Panel concludes: (a) that the domain name <statefarms.com> is confusingly similar to Complainant’s trademarks; (b) that Respondent has no rights or legitimate interest in the domain name; and (c) that Respondent registered and used the domain name in bad faith.  Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain name <statefarms.com> be transferred to the Complainant.